Daniela Bessone

In: Revista da ABPI n° 97 – 11-12/2008.

 

 

 

1. Brief Overview of Patent Infringement in Brazil

In Brazil, the protection to Intellectual Property is one the fundamental rights and guarantees granted enshrined in the Federal Constitution (article 5, XXIX). In the infra-constitutional level, the Industrial Property Act (Federal Law 9,279/1996) [1] governs the matter in both civil and criminal spheres. Brazil is also a member of the Paris Convention for the Protection of Industrial Property [2], of the Patent Cooperation Treaty (PCT) [3], and of the General Agreement on Tariffs and Trade (GAAT), including the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement [4]. As to trademarks, Brazil is not yet a member of the Madrid Protocol, but the Country’s accession is expected to be formalized soon.

In what concerns the procedural aspects of Intellectual Property litigation, including taking evidence, the provisions of the Code of Civil Procedure (“CCiP”) and of the Code of Criminal Procedure (“CCrP”) are of the utmost relevance.

After an introduction to civil and criminal aspects of patent infringement in Brazil, this presentation will focus on taking evidence mechanisms available in the Country for patent litigation; on the possibilities of obtaining evidence in Brazil for litigation outside Brazil; and on the use, in Brazil, of evidence obtained abroad.

1.1. Civil Aspects of Patent Infringement

Subject to the legal exemptions [5], the patentee is granted the right to prevent third parties from (i) manufacturing, (ii) using, (iii) offering for sale, (iv) selling, or (v) importing for such purposes, without the patentee’s consent, a product that is the subject of a patent; or a process or product directly obtained from a patented process (IP Act, article 42). The patentee is further granted the right to prevent third parties from contributing to the practice of such acts (IP Act, article 42, paragraph 1).

Both the IP Act (article 209, paragraph 1) [6] and the Code of Civil Procedure (articles 273; 287; and 461) confer to the patentee the possibility of requesting a preliminary injunction, inaudita altera parte (ex-parte), for the immediate cessation of the infringing activity, under a daily penalty fine applicable in cases of non-compliance, as well as for the complete seizure of the infringing articles, provided that the patentee is able to demonstrate, prima facie, the occurrence of the legal requirements for an anticipatory measure of this kind: fumus boni iuris, i.e, a strong likelihood of success on the merits; and periculum in mora, i.e., risk of irreparable harm (or a harm that may turn out to be extremely difficult to be remedied) to the plaintiff if an injunction is not granted.

When the allegedly infringed patent refers to a process, the burden of proof lies with the defendant: the defendant must produce evidence that the relevant product was obtained through a manufacturing process different from the one protected by the patent (IP Act, article 42, 2nd paragraph). Nevertheless, a preliminary injunction will not be granted if the patentee is not able to demonstrate strong likelihood of the infringement.

The validity of the patent is presumed, meaning that the patentee is not required to produce prima facie evidence thereof; this is, of course, a rebuttable presumption. The defendant may overcome it with evidence to the contrary: the IP Act expressly admits that the invalidity of the patent be alleged as a matter of defense (IP Act, articles 56, paragraph 1, and 205) [7]. The periculum in mora (irreparable harm) is also generally treated by the courts as presumed: if the patentee is able to produce clear evidence of ownership of the patent, as well as of the infringement, the burden of proof for irreparable harm is significantly reduced.
Again, this is a rebuttable presumption that may be overcome under certain (exceptional) circumstances.

It is important to note that the court may subject the granting of an injunction to the posting, by plaintiff, of a bond or other acceptable guarantee to secure the indemnification for damages that may be sustained by the defendant as a consequence of the execution of the provisional order (seizure and/or injunction), should the claim be rejected on the merits (IP Act, article 209, paragraph 1).

The licensee may be invested by the patentee with full powers to take the required actions aimed at preventing infringement (IP Act, article 61). But, for this purpose, the license agreement must have been previously recorded with the Instituto Nacional da Propriedade Industrial – INPI (the Brazilian PTO), such recordation being a condition to the effectiveness of the agreement as regards third parties (IP Act, article 62).

Obviously, the patentee is also entitled to claim damages for unauthorized use of the patent (IP Act, article 208), that shall be quantified by the adoption of the most favorable criterion to the patentee among the following: (i) the benefits that the patentee would have enjoyed if the infringement had not occurred; (ii) the benefits the infringer enjoyed with the violation; or (iii) a reasonable royalty (IP Act, article 210).

The right to claim damages shall be retroactive to the date of publication of the patent (IP Act, article 44), unless the plaintiff can prove that the infringer acquired knowledge of the contents of the patent application prior to its publication, in which case damages will begin accruing from the commencement of the exploitation thereof (IP Act, article 44, paragraph 1).

The statute of limitation applicable to claims for damages arising from the infringement of IP rights is 5 years.

1.2. Criminal Aspects of Patent Infringement

As anticipated, patent infringement is not only a tort in Brazil, but may also qualify as a criminal offense, punished with detention or a fine:

Article 183 – A crime is committed against a patent of invention or a utility model patent by a person who:

I – manufactures a product that is the subject matter of a patent of invention or a utility model patent, without authorization of the patentee; or
II – uses a means or process that is the subject matter of a patent of invention, without authorization of the patentee.

Penalty – detention of 3 (three) months to 1 (one) year, or a fine.

Article 184 – A crime is committed against a patent of invention or a utility model patent by a person who:

I – exports, sells, exhibits or offers for sale, maintains in stock, hides or receives, with a view to use for economic purposes, a product manufactured in violation of a patent of invention or of a utility model patent, or that is obtained by a patented means or process; or
II – imports a product that is the subject matter of a patent of invention or of a utility model patent or is obtained by a means or process patented in this country, for the purposes mentioned in the previous item, and that has not been placed on the external market directly by the patentee or with his consent.

Penalty – detention of 1 (one) to 3 (three) months, or a fine.

Article 185 – Supplying a component of a patented product, or material or equipment for carrying out a patented process, provided that the final application of the component, material or equipment necessarily leads to the exploitation of the subject matter of the patent.

Penalty – detention of 1 (one) to 3 (three) months or a fine.

Article 186 – The crimes of this Chapter are committed even if the violation does not affect all the claims of the patent or if it is restricted to the use of means equivalent to the subject matter of the patent.

Given the fact that a criminal offense is always also considered a civil wrong, giving rise to damages, the only relevant distinction between offenses that qualify as patent infringement of a civil nature and those of a criminal nature refers to the “importation of products that have been placed on the external market directly by the patentee or with his consent” (parallel import), which is generally considered a tort[8], but not a criminal offense.

The IP Act provides for the increase of the penalties of detention applicable to crimes against patents, by one third to one half, when the infringer is or was a representative, proxy, agent, partner or employee of the patentee or registrant or, further, of his licensee. As to the monetary penalties, they shall be set at a minimum of 10 and a maximum of 360 daily-fines, and may be increased or reduced, by as much as 10 times, in view of the personal situation of the infringer and the magnitude of the advantage obtained (IP Act, article 197).

2. Evidence Taking Mechanisms Available in Brazil

Brazil is a civil law jurisdiction, whose procedural system is strongly rooted in the European continental tradition. As such, Brazilian civil procedure does not contemplate pre-trial discovery (or disclosure) typical of common law jurisdictions, such as the United Kingdom and the United States. In other words, prior to the beginning of the legal proceeding, the parties are neither required to provide each other with information, nor to disclose to each other the content of any documents; each of them is expected to gather its own evidence by its own means. The complaint must be substantiated with the essential documentary evidence available to the plaintiff at the time of the filing, while the defendant must submit along with the defense the documentary evidence destined to prove the allegations made therein, although both parties are entitled to submit at a later time additional documentary evidence (especially with the purpose of proving facts occurring after the filing of the suit or contradicting the evidence submitted by the adverse party) (CCiP, articles 396 and 397).

Under the Brazilian Code of Civil Procedure, “[a]ll legal means of evidence, as well as those that are morally legitimate, even if not specified in this Code, shall be considered able to prove the truth of the facts on which the claim or the defense is grounded” (CCiP, article 332). The means of evidence expressly mentioned in the Code are (i) the parties’ inquiry by the judge; (ii) confession; (iii) exhibition of documents or objects that are in the possession of the adverse party or of a third party; (iv) documentary evidence; (v) witnesses’ testimony; (vi) technical expertise; and (vii) judicial inspection (carried out in person by the judge).

Each of those means of evidence has many peculiarities, the analysis of which is unfortunately beyond the scope of this presentation [9]. But a couple of remarks are worth making:

(a) As to the exhibition of documents or objects, the party or the third party shall be exempted from disclosing documents or objects that (i) may result in the party’s or third party’s or their relatives’ dishonor, or that may bring a risk of criminal charges being filed against them; or (ii) are protected by a duty of confidentiality of a professional nature; (CCiP, article 363, III and IV).

(b) As to documentary evidence, it should be noted that declarations contained in private affidavits, which are very usual in common law jurisdictions, are presumed true as regards the person who signed the affidavit; but the affidavit does not suffice as evidence of the facts therein declared, which must be proved by other means (CCiP, article 368).

(c) As to witnesses’ testimony, the formalities of Brazilian Law are substantially different from those prevailing in common law countries: for instance, witnesses may not be asked to give their testimony under oath, although they must undertake to tell the truth and shall be warned by the judge that giving false information qualifies as a criminal offense (CCiP, article 415); the attorneys for the parties are not allowed to directly question the witnesses, as examination and cross-examination are controlled by the judge (CCiP, article 416), who may (and often does) rephrase the questions made by the attorneys, as he/she deems appropriate, in order to avoid the inducement of the witness in error; witnesses are heard separately from each other and successively, so that a given witness does not listen to another witness’s testimony (CCiP, article 413); the witness shall be exempted from testifying about facts that may bring a serious harm to himself/herself, or to his/her family, or about facts protected by a duty of confidentiality of a professional nature (CCiP, article 406); oral evidence may be recorded in audio or video (CCiP, article 417), but it is not mandatory, as the judge may also, at his/her discretion, dictate the answers to a court clerk (not always verbatim).

(d) As to technical expertise, which may include examination, inspection and/or assessment, the expert, who must be a qualified professional (CCiP, article 145, paragraphs 1 to 3) well known by the judge, is not appointed by any of the parties, but rather by the court (CCiP, article 421); but the parties are entitled to appoint their own “technical consultants”, to follow up the expert’s work and to comment (or challenge) the expert’s report (CCiP, article 421, paragraph 1, I). If a given technical expertise is multidisciplinary, the court may appoint as many different professionals as necessary to carry out the work, the same applying to the parties’ technical consultants.

Courts shall give to each piece of evidence, either produced in Brazil or abroad, the relevance and weight they deem adequate under the concrete circumstances of the case. This is a consequence of the so-called “principle of judges’ free convincement”, meaning that judges are not bound by any particular piece of evidence, including confession, technical expertise reports, etc. (CCiP, articles 131 and 436). But court decisions must clearly state the grounds thereof, including those related to the findings of fact (Federal Constitution, article 93, IX, and CCiP, article 458, II).

As a general rule, evidence shall be produced in the course of the legal proceeding, along with the complaint/answer, as seen above, and after the judge determines the disputed facts (which will depend on the allegations made by the defendant in the answer and on the plaintiff’s comments to the defendant’s allegations). However, the IP Act, the Code of Civil Procedure and the Code of Criminal Procedure provide for a range of very effective measures a patentee may rely on for the purpose of taking evidence before the filing of an infringement action, within the scope of the so-called preparatory proceedings, summarized in 2.1 and 2.2 below.

2.1. Taking Evidence in the Criminal Sphere

The Brazilian Code of Criminal Procedure contains a chapter entirely devoted to Intellectual Property crimes, which are crimes of private action [10], meaning that the relevant legal proceedings shall be commenced upon the submission of a claim by the injured party, rather than by the initiative of the Public Attorney’s Office (IP Act, article 199).

Two specific conditions must be fulfilled in order that a private criminal claim is admitted: the proof of ownership of the IP rights (in the case of patent infringement, the submission of the letter patent) and, whenever vestiges of the crime have been left, the analysis thereof by expert(s) appointed by the court (CCrP, articles 525 and 526).

Accordingly, before taking any other judicial measure for the criminal prosecution of the infringer, the patentee shall file a search-and-seizure preparatory action with a criminal court (i) demonstrating ownership of the patent; (ii) stating the reasons for which the patentee believes a patent infringement has been occurring; and (iii) requesting a judicial order, ex-parte, for the search-and-seizure of the objects relevant to the infringement.

Under the Code of Criminal Procedure, the search-and-seizure measures shall be carried out by two experts appointed by the judge (not by the plaintiff), who shall verify the existence of grounds for the seizure (CCrP, article 527). The experts must submit their report to the court within a 3-day term from the inspection, irrespective of whether the seizure has occurred or not (CCrP, article 527).

Regarding crimes against process patents, the IP Act contains a provision under which “During execution of a search-and-seizure measure, with respect to a crime against a process patent, the court bailiff will be accompanied by an expert who will verify, preliminarily, the existence of the criminal offense, the judge being able to order the seizure of products obtained by the infringer using the patented process” (IP Act, article 201). It is not entirely clear whether the IP Act was meant to derogate the Code of Criminal Procedure as to the number of experts that shall carry out, along with the court bailiff, the search-and-seizure measures: one expert (an expert), instead of two. Anyway, this provision of the IP Act applies to process patents only. In view of the technical nature, often complex, of patent infringement, it is advisable that plaintiffs ask the court to appoint two experts for this task.

If, upon inspection, the experts conclude that there were no grounds for the seizure, the plaintiff may challenge the experts’ report and the judge may order the seizure to be made, in his/her discretion, despite the experts’ opinion to the contrary (CCrP, article 527, sole paragraph).

The next step is the confirmation of the experts’ report by the criminal judge and the criminal action shall subsequently be filed within a 30-day term from such confirmation (CCrP, articles 528 and 529) [11].

In case of industrial or commercial premises legally organized and functioning publicly, the preliminary measures will be limited to the search-and-seizure of the envisaged objects and documents, while the interruption of the defendant’s lawful activities is not permitted (IP Act, article 203). What if the defendant is not engaged in any activities other than the unlawful ones? The only possible answer to this question would be that this provision should not apply in this case.

The plaintiff shall be liable before the defendant for damages arising out of a search-and-seizure measure requested in bad faith, spirit of rivalry, mere caprice or gross error (IP Act, article 204).

Although conceived as a preparatory proceeding of criminal actions, the search-and-seizure procedure governed by the Code of Criminal Procedure is often used as a means to gather evidence to substantiate civil actions, aiming at the immediate cessation of the infringement, by means of an injunction, as well as damages. The criminal search-and-seizure preparatory action has the advantage of being always an ex-parte proceeding. Besides, it is more than a right granted to the patentee, being a true burden on the patentee, a condition for the admissibility of the criminal private action; thus, criminal judges tend to grant the order in the presence of the proof of ownership of the IP rights and signs of the criminal offense.

2.2 Taking Evidence in the Civil Sphere

The Brazilian Code of Civil Procedure (“CCiP”) provides for a number of preparatory measures that can be extremely useful in gathering evidence for Intellectual Property litigation, summarized below.

(a) Introductory Note on the Scope of Cautelar [12] Proceedings
Cautelar proceedings were originally conceived to secure the procedural risk, i.e., to guarantee the effectiveness and enforceability of the final decision to be rendered on the merits in the so-called main action. Technically, the purpose of the cautelarproceedings has never been anticipating, in favor of the plaintiff, the effects of the final decision on the merits, thus reversing in favor of the plaintiff the burden of time, but only conserving certain factual or legal circumstance as required to secure the utility of the final decision on the merits: seizing the cattle before it becomes a steak.

A typical matter for a cautelar proceeding would be the anticipated production of evidence proceeding that could be jeopardized by the lapse of time, either by virtue of natural causes – if a witness to be heard is too old or seriously ill, for example – or by reasons attributable to the adverse party – if documents or objects may be destroyed before they can be produced and/or analyzed in the scope of a technical expertise (CCiP, article 420).

However, protection to IP rights has always claimed rapid and effective remedies to fight infringement, preferably by surprise. In the past, the lack of specific courses of action that could provide IP owners with the indispensable speed in enforcing their rights, especially concerning the immediate cessation of the infringement, the cautelarproceedings ended up by being widely used by patentees for obtaining the total or partial anticipation of the very decision sought on the merits, i.e., an order for the seizure of the totality of the infringing items and for the immediate cessation of the infringement. Such flexible use of cautelar proceedings was not entirely technical, but generally accepted by the prevailing case-law, on the ground that it filled a gap in Brazilian procedural law.

This scenario changed radically in 1994, upon deep modifications introduced in the Code of Civil Procedure [13], especially as regards the possibility of total or partial anticipation of the envisaged decision on the merits, always subject to the demonstration, by the plaintiff, of strong likelihood of success on the merits and risk of irreparable harm (or a harm that may turn out to be extremely difficult to be remedied). Such changes also included a variety of measures now expressly made available to the judge for the purpose of obtaining specific performance from the defendant or, if specific performance is unfeasible, adopting alternative measures that allow for equivalent results to those that would have been otherwise obtained by specific performance, including, e.g., the seizure of the totality of the infringing items (CCiP, articles 273 and paragraphs; article 287 and 461 and paragraphs).

As a result of said changes in Brazilian procedural law, the cautelar proceedings were restored to their original function: to preserve a factual or procedural situation, as necessary for the future effectiveness of the decision on the merits, including evidence taking [14].

(b) General Provisions on Cautelar Proceedings (articles 796 to 812)
Under the cautelar proceeding, which can be either preparatory or incidental and is generally dependent on the main action, granted broad powers to order a variety of measures, as they deem appropriate and necessary to prevent one of the parties from causing irreparable harm to the rights of the other party before or during the course of the main action (CCiP, articles 796 to 799).

Ex-parte orders may be and are often granted in cautelar proceedings, when it is likely that the defendant, being first summoned, will frustrate the execution thereof (CCiP, article 806).

Cautelar orders are designed to be effective during the entire duration of the main action, unless previously revoked or modified, which may happen at any time (article 807). But the effectiveness of the cautelar order shall automatically cease (i) if the main action is not filed within a 30-day term counted from the execution of the cautelar order; (ii) if the cautelar order is not executed within a 30-day term counted from the granting thereof; or (iii) if the proceeding is terminated, either with or without prejudice (CCiP, article 808).

The rejection of a request for a cautelar order does not hinder the filing of the main action, and shall not have any influence on the judgment of the merits thereof, except when the cautelar proceeding has been terminated in view of a statute of limitation applicable to plaintiff’s claim (CCiP, article 810).

The plaintiff shall be liable for damages caused to the defendant with the execution of the cautelar order if: (i) the decision on the merits eventually rendered in the main action is unfavorable to the plaintiff; (ii) the plaintiff does not take the measures required for the summoning of the defendant within a 5-day term, whenever ex-parteorders have been granted; (iii) the effectiveness of the cautelar order ceases; or (iv) a statute of limitation is considered applicable by the judge in the cautelar proceeding (CCiP, article 811).

Besides the general and broad cautelar power granted to the judge, the Code of Civil Procedure also provides for some specific cautelar procedures, described below.

(c) Search-and-Seizure Action (CCiP, articles 839 to 843)
Within the scope of a search-and-seizure action, the judge may issue an ex-parteorder for the search-and-seizure of objects [15], including documents (CCiP, article 839).

In the complaint, the plaintiff shall state the grounds for the requested measure and the place in which the objects to be inspected/seized are located (CCiP, article 840).

The plaintiff is not required to produce preliminary evidence of those facts: the mere statement of the circumstances that lead to that conclusion shall suffice at this point.

Whenever the dispute involves technical matters, as almost always happens in patent litigation, it is most advisable that the plaintiff substantiates the complaint with an expert report, even if preliminary and subject to reservations. In any case, the judge may schedule a justification hearing, to be held ex-parte and under secrecy of justice, if he/she deems it necessary to get additional evidence of the facts alleged by the plaintiff (such as the inquiry of an expert witness) (CCiP, article 841).

The order shall be executed by two court bailiffs, accompanied by two witnesses (CCiP, article 842), who have the right to force their way on to defendant’s premises, in case of resistance. There is a provision specifically referring to the seizure of copyright counterfeits, under which the presence of two experts appointed by the judge is mandatory; before the seizure, those experts shall confirm the occurrence of the infringement (exactly as provided for by the Code of Criminal Procedure, regarding a criminal search-and-seizure preparatory action). In practice, this provision originally conceived for copyright infringement has been often adopted also as regards patent infringement.

Technically, this search-and-seizure cautelar proceeding should be used for the purpose of gathering evidence, and therefore, the court bailiffs and experts should apprehend only a sufficient quantity of samples of the infringing items, and all other elements connected with the infringing activity, in order to substantiate the main action. However, it is not uncommon that, in practice, patentees resort to the search-and-seizure action aiming at the seizure the totality of the allegedly infringing articles found at the defendant’s premises. Search-and-seizure cautelar orders of this kind are often revoked by the appellate courts, on the ground that the assessment of the alleged infringement is a highly technical issue that requires the full production of evidence, with the observance of the adversarial system, which is not feasible at the ex-partepreliminary stage of the dispute.

As mentioned above apropos of the criminal proceeding, the preliminary measures to be carried out in industrial or commercial premises legally organized and functioning publicly shall be limited to the search-and-seizure of the infringing products, since it is impermissible to interfere with their legal activities (IP Act, article 203).

If information of a confidential nature, such as industrial or trade secrets, is revealed during the search-and-seizure proceedings, or at any other time during the course of the action, the judge must determine that the action continues under secrecy of justice, and the use of such information by the other party for “any other purposes” is expressly forbidden (IP Act, article 206). Despite the specificity of the provision, it is more than reasonable to sustain that such prohibition relates to the use of the information by the plaintiff for industrial/commercial purposes and/or to the disclosure of the confidential information to third parties, but not to the use thereof by the plaintiff for the purpose of producing evidence in other parallel patent litigation between the same parties, including ongoing proceedings in different jurisdictions.

(d) Exhibition Proceeding (CCiP, articles 844 and 845)
In an exhibition proceeding, the judge may issue an ex-parte order for the judicial exhibition of: (i) an object that the plaintiff has the right to know of; (ii) a document of common interest to the parties (e.g., a contract between them); (iii) corporate documents of the defendant, in specific cases set out by the law (CCiP article 844).

The defendant shall be exempted from disclosing documents or objects that (i) may result in the defendant’s (or, in case of individuals, their relatives’) dishonor, or that may bring a risk of criminal charges being filed against the defendant; or (ii) are protected by a duty of confidentiality of a professional nature (CCiP, article 363, III and IV).

The exhibition proceeding is the appropriate remedy for situations in which all that the plaintiff needs and desires is the disclosure by the defendant, before the courts, of certain objects and/or documents, in order to determine their characteristics and content and to prevent their modification or destruction. But, in this case, the relevant object and/or document remain in the defendant’s possession. Thus, the action is the adequate remedy for specific cases in which it is not necessary to seize objects or documents: as long as such objects or documents are produced and examined by the Court, they may be returned to the defendant.

Doctrine and case-law make a distinction between two different types of exhibition proceedings. The first type is the so-called satisfying exhibition proceeding, in which the plaintiff aims at obtaining data in order to decide whether or not to bring a future claim against the defendant. In view of the characteristics of the objects and/or documents that have been exhibited, plaintiff may very well decide not to bring the claim. In this situation, there is no need to demonstrate periculum in mora, i.e., risk of irreparable harm (or a harm that may turn out to be extremely difficult to be repaired): the mere right to know and examine the envisaged objects/documents suffices.

The second type of exhibition proceeding is the true cautelar exhibition proceeding, in which the plaintiff wishes to conserve the evidence, i.e., to protect the evidence against modification or destruction. It is designed to secure evidence, rather than to produce it. The plaintiff shall demonstrate that the piece of evidence at issue is likely useful for the main action as well as the periculum in mora, which shall be considered a fulfilled requirement in view of a reasonable chance that the evidence may be under risk of modification or destruction.

In the complaint, the plaintiff shall state: (i) the specifications, as completely as possible, of the object and/or document to be exhibited; (ii) the purpose of the envisaged evidence, setting forth the facts that relate to such document and/or object; and (iii) the circumstances on which the plaintiff grounds the belief that the object and/or document is, in fact, in the possession of the defendant (CCiP article 356). The defendant shall be granted a 5-day term for the response (CCiP article 357). If the defendant keeps silent, the facts stated by the plaintiff shall be presumed to be true and correct. If the defendant refuses to comply with the exhibition order without an acceptable reason, a search-and-seizure order may be issued. A third party may also be summoned to produce the relevant object and/or document.

It is important to note that the prevailing understanding in doctrine and case-law is that the general provision mentioned above, under which the main action shall be filed within a 30-day term from the execution of the order rendered in the cautelarproceeding, does not apply to the exhibition proceedings aimed at gathering evidence.

The evidence shall not preclude, i.e., it shall remain effective even if the main suit is not filed.

(e) Anticipated Production of Evidence Proceeding (CCiP, articles 846 to 851)
The anticipated production of evidence proceeding is the remedy available where there are reasons to believe that the production of evidence of certain facts will be very difficult or impossible during the regular course of the main action (periculum in mora). According to the letter of the law, the evidence to be obtained under such proceeding comprises: (i) the parties’ inquiry, (ii) witnesses’ inquiry, and (iii) technical expertise (CCiP article 846). The case-law has been regarding those three types of evidence as mere examples, thus admitting the anticipated production of evidence also under other circumstances, as long as the judge is convinced that such anticipation is necessary or advisable.

In the complaint, the plaintiff shall state the reasons for the anticipation (periculum in mora) and shall precisely describe the facts in connection with which the evidence shall be produced (CCiP article 848). The measure is, in principle, not admissible if the evidence may be regularly produced in the normal course of the main action.

Under exceptional circumstances, however, doctrine and case-law have been accepting anticipated production of evidence regardless of the occurrence of periculum in mora, if the judge believes that it is convenient that the evidence be produced at once. The admissibility of such an exceptional type of anticipated production of evidence must be determined on a case by case basis and will be grounded on general instruction powers vested in the judge.

Technically, the anticipated production of evidence proceeding has a non-contentious nature, meaning that the merits of the underlying dispute shall not be dealt with in it and the defense, if any, shall be limited to the admissibility of the anticipation of the evidence. The judge does not render a true decision, in the sense that no actual conflict between the parties is terminated (unless the defendant challenges the admissibility of the anticipation of the evidence under the concrete circumstances, a case in which the decision shall be limited to this specific point), but only directs the production of the evidence and declares the evidence produced. The evaluation of the evidence shall not be made in this proceeding, which has the sole purpose of anticipating the production thereof, thus securing the procedural risk.

In view of the peculiarities of the anticipated production of evidence proceeding, the plaintiff is not required to demonstrate a likelihood of success on the merits (fumus boni iuris). For the same reason, the plaintiff does not have to specify the nature of the action to be filed in the future. It is not even mandatory that the parties to the anticipated production of evidence proceeding be the same as those parties in the main action, although there must be a link between plaintiff and defendant, as regards the evidence to be produced. For instance, an anticipated production of evidence proceeding can be filed against the supplier of a component of a patented product, or the supplier of material or equipment required for carrying out a patented process, while the main action is filed against the patent infringer, rather than against said supplier.

Likewise the exhibition proceeding, the requirement for the filing of the main action within a 30-day term from the execution of the cautelar decision does not apply to the anticipated production of evidence proceeding, meaning that the evidence produced shall remain valid, even if the main action is not filed within such term.

(f) Justification Proceeding (CCiP, articles 861 to 866)
The justification proceeding is available to whoever intends to justify the existence of a certain fact or legal relationship, for the purpose of producing evidence thereof in a separate action (CCip article 861).

Justification consists of the inquiry of witnesses on the alleged facts, being the interested party also allowed to submit documents
(CCiP, article 863). But other means of producing evidence, such as assessment, technical expertise, or exhibition of objects and documents in the possession of the adverse party, are not admitted here.

The justification proceeding is non-contentious, in the sense that the interested party is not allowed to request that the court declares the existence/inexistence of a certain fact or legal relationship, or orders the practice of an act by the adverse party, or executes an order, etc.: the request shall be simply limited to the documentation of evidence.

In this regard, it is worth stressing that the production of evidence is not the same as the judicial declaration of the existence of the relevant fact or legal relationship. The evidence taken by means of a justification proceeding is no more than a piece of evidence that must be qualified and evaluated in the future by the judge in charge of rendering a decision on the merits of the dispute (if any), who will not be bound by any previous judgment held in the justification proceeding. Even the very existence of a fact proved in the justification proceeding is not indisputable: other means of evidence can be used by the adverse party to contradict it.

The adverse party must be summoned (CCiP, article 862) in order to have the opportunity of challenging the testimony of certain witnesses, examining and cross-examining witnesses, and reviewing the documents that may have been submitted by the interested party (CCiP, article 864), but no defense is admitted against the justification request itself (CCiP, article 865).

Additionally, the adverse party may not produce evidence of its own or submit contradictory evidence in the justification proceeding; these measures are to be taken (or not) in the main action on the merits, or in a separate justification proceeding brought by the adverse party.

The justification proceeding shall be completed by means of an approval (homologation) ruling, in which the judge shall not make any remarks on the merits of the evidence produced, being limited to determining whether the applicable legal formalities have been complied with. The files shall be subsequently delivered to the interested party (CCiP, article 866). According to the letter of the law, it is not possible to appeal such rulings (CCiP, article 865). However, doctrine and case-law tend to give a more flexible interpretation to such provision, admitting that appeals be filed in certain cases (for example, if the trial court ruling rejects the justification request; or if it does not homologate the evidence produced; or if it exceeds the objective limits mentioned above, etc.).

The interested party may very well decide to never use, in the future, the evidence obtained; it is also possible that the main action on the merits be filed not by the interested party, but by a third party. This means that the right to obtain evidence on a certain fact, by means of a justification proceeding, is independent of the substantive right to which the evidence is related. The fumus boni iuris (likelihood of success on the merits) is not, therefore, a requirement for the justification. For the same reason, the interested party does not have to inform the court of the nature of the main action to be filed on the merits.

When filing a justification proceeding, the interested party must state the particulars thereof, but the periculum in mora (irreparable harm or a harm that may turn out to be extremely difficult to be remedied) is not mandatory either, as the justification proceeding has not been designed to secure evidence, but instead to have the evidence duly documented.

Also as to the justification proceeding, the requirement for the filing of the main action within a 30-day term is not applicable, meaning that the evidence produced shall remain valid, even if the main action is not filed within such term.

(g) The utility and effectiveness of the proceedings briefly described above for patent litigation, especially the search-and-seizure action, which can be combined with a request for anticipated production of evidence, is indisputable. But the patentee must make wise use of those remedies, to avoid being trapped by the anxiety of having the entire production of the defendant seized at once, by means of an ex-parte order granted in a cautelar proceeding. As mentioned above, the appellate courts tend to understand that patent litigation is often extremely complex under a technical viewpoint, requiring an extensive and adversarial production of evidence, incompatible with the first assessment under which preliminary injunctions are ordinarily granted. But an order for search-and-seizure of samples of the allegedly infringing products and documents, for the purposes of a technical expertise, will hardly be denied by the trial court and hardly quashed by the appellate court.

The most appropriate course of action will depend on the peculiarities of each concrete situation and shall be determined on a case by case basis. But if the patentee already has evidence of infringement that is strong enough to substantiate a request for the seizure of the entirety of the allegedly infringing articles, then the best choice will probably be immediately filing the action on the merits, and requesting a preliminary injunction, which, since the procedural reform of 1994, has been entirely possible in Brazil.

3. Obtaining Evidence in Brazil for Litigation in Other Jurisdictions

Generally, the gathering of evidence in Brazil for litigation in other jurisdictions is achieved through letters rogatory for the performance of the relevant interlocutory order rendered by the interested foreign court. Although the existence of Judicial Cooperation Agreements between Brazil and the country of origin of the order may expedite and facilitate the performance of the envisaged acts, such an agreement is not a requirement for the admissibility of letters rogatory in Brazil.

But with creativity, it is possible to figure out other alternatives for gathering evidence in Brazil directly, especially as regards evidence to be taken before the filing of the main suit abroad.
These two aspects of the matter will be summarized below.

3.1. Letters Rogatory and Judicial Cooperation Agreements

Under the Brazilian Federal Constitution (“FC”), the effectiveness of court orders and decisions (either interlocutory or final) rendered in other jurisdictions, including interlocutory decisions aiming at gathering evidence in Brazil (witnesses’ testimony, assessment, disclosure of information, technical expertise, etc.), is subject to the previous approval of the Superior Court of Justice, the highest court in Brazil with competence to rule on non-constitutional matters (FC, article 105, I, “i”). The approval of interlocutory decisions is known in Brazil as “exequatur” (while the approval of final decisions is known as “homologation”).
Interlocutory foreign decisions are necessarily submitted to the Superior Court of Justice by means of letters rogatory issued by the judicial authority of the country of origin, to be performed by a Brazilian federal judge. In other words, procedural acts can only be carried out in Brazil with the intervention of a Brazilian judicial authority, after the exequatur has been duly granted: foreign courts are not allowed to directly order procedural acts to be performed in the Brazilian territory or to compel the testimony of witnesses domiciled in Brazil before a foreign judge (but if the witness domiciled in Brazil voluntarily decides to testify abroad, Brazilian law will not interfere with the validity of the testimony).

Letters rogatory that are offensive to the Brazilian sovereignty and public policy do not qualify for exequatur (Introductory Law to the Civil Code, article 17). Thus, if the discovery sought and/or the means of producing evidence are incompatible with basic principles of Brazilian law, the exequatur may be denied.

The proceeding applicable to the exequatur is currently set out by Resolution of the Superior Court of Justice no. 9, of May 4, 2005. The adverse party shall be summoned to oppose the exequatur in a 15-day term (Res. 9, article 8). The only valid grounds to oppose the exequatur are those relating to the authenticity of the relevant documents, the interpretation of the actual meaning of the foreign decision and the compliance with the procedural requirements applicable in Brazil (Res. 9, article 9).

Resolution no. 9 introduced in Brazilian Law an extremely important innovation: “The measures required by means of a letter rogatory may be carried out ex-parte, when the prior summoning of the interested party may result in the ineffectiveness of the international cooperation” (Res. 9, article 8, sole paragraph). Ex-parte measures, the relevance of which is undeniable, had never been admitted before by the case-law of the Supreme Court.

After the exequatur is granted, the letter rogatory shall be sent to a Brazilian federal judge for the execution of the order (Res. 9, article 13), which shall comply with the formalities of the Brazilian procedural law (for example, as regards the testimony of witnesses or the production of a technical expertise) and with the substantive law of the country of origin. The federal judge in charge of the performance of the order cannot oppose to it, nor can he/she extend or restrict the envisaged act.

Brazil is not a party to the Hague Convention on Taking of Evidence Abroad in Civil or Commercial Matters (Hague, March 18, 1970). The Country is a party to the Inter-American Convention on the Taking of Evidence Abroad (Panama, January 30, 1975) and to the Additional Protocol to said Convention (La Paz, May 24, 1984), but none of them have been ratified by the Brazilian Government yet and, therefore, are not effective in Brazil.

As regards civil and commercial matters, Brazil entered into bilateral Judicial Cooperation Agreements with Argentina, Bolivia, Chile, Spain, France, Italy, Portugal, and Uruguay. Brazil is also a member of multilateral Judicial Cooperation Agreements with the MERCOSUR [16] countries – Argentina, Brazil, Paraguay and Uruguay –, and with the Organization of American States (OAS)[17] countries – Chile, Ecuador, USA, Guatemala, Mexico, Panama, Paraguay, Peru, Uruguay and Venezuela.

Except as otherwise expressly authorized by an international treaty, foreign interlocutory orders that demand coercive execution in Brazil are not acceptable and the relevant letters rogatory do not qualify for exequatur. Coercive execution measures are only available for final decisions, which are also subject, as mentioned above, to the approval (homologation) of the Superior Court of Justice. The case-law of the Brazilian Superior Courts has always been extremely strict on that point. Search-and-seizure orders, for example, would not be admitted in most of the cases; but the seizure of samples is in theory possible, if the rogatory letter relates to a technical expertise to be carried out in Brazil.

In this respect, it should be mentioned that Brazil is not a party to the Inter-American Convention on Execution of Preventive Measures (Montevideo, May 8, 1979). But the Country is a party to the Cautelar Measures Protocol, also known as Ouro Preto Protocol (“OPP”), which provides for the enforceability in each of the signatory countries (Argentina, Brazil, Paraguay and Uruguay) of cautelar measures rendered by the Judiciary of another signatory country.

Under the Ouro Preto Protocol, the admissibility of the cautelar measures among the MERCOSUR countries shall be governed by the law of the country of origin of the order, while the execution thereof shall be governed by the law of the country of performance (OPP, articles 5 and 6). But also here, it is required that a letter rogatory be issued and submitted to the Superior Court of Justice, for exequatur purposes. As regards other countries that are not members of the MERCOSUR, not even this possibility is available.

From what has been described (in a nutshell) above, it is clear that the traditional means of taking evidence in Brazil for litigation in other jurisdictions are hardly reconcilable with the speed-surprise factors, which are extremely important in IP litigation. Even if the exequatur proceedings can be expedited by virtue of Judicial Cooperation Agreements, and even in view of the possibility of ex-parte measures being granted by the Superior Court of Justice in exequatur proceedings, the fact is that the issuance of a letter rogatory and the bureaucratic steps for the exequaturproceeding can easily take much longer than the patentee can wait without sustaining irreparable harm.

3.2. Preparatory Proceedings Filed Directly in Brazil

A foreign party that wishes to take evidence directly in Brazil and has a substantive right protected in Brazil can obviously take advantage of all applicable preparatory proceedings made available by the Brazilian Codes of Criminal and Civil Procedure, regardless of the party’s plans on where to submit the evidence gathered by means of said proceedings. In other words, a company that simultaneously holds equivalent patents in Brazil and abroad may commence legal proceedings before the Brazilian

Courts for the purpose of obtaining evidence of infringement in the Brazilian territory, to substantiate parallel claims in other jurisdictions.

What if a company does not hold a valid patent in Brazil, but wishes to directly obtain evidence of acts performed in Brazil, as a preparatory measure for infringement actions to be filed in other jurisdictions? The answer to this question is anything but simple.

Under the Code of Civil Procedure, the Brazilian Judiciary has competence to decide on a given case whenever (i) the defendant, regardless from nationality, is domiciled in Brazil[18]; or (ii) the obligation must be performed in Brazil; or (iii) the proceeding is originated from facts occurred or acts performed in Brazil (CCiP, article 88).

As briefly described in 2.2 above, certain cautelar proceedings do not qualify as true actions, as they do not have a contentious nature, meaning that the merits of the underlying dispute shall not be dealt with in those proceedings. This is the case of the anticipated production of evidence proceeding and of the justification proceeding, which do not require the filing of a main action. Even if filed, the main action does not have to be always tried by the same court. Besides, the interested party may not be the plaintiff of the main action. In sum, these are independent cautelar proceedings, which can be commenced by any interested party.

Under this perspective, a company that is a patentee in the Netherlands, but not in Brazil, should be able to file an anticipated production of evidence proceeding or a justification proceeding (as the case may be) in Brazil, against an entity domiciled in Brazil that exports raw materials to the Dutch infringer, looking to take evidence of this fact, to be submitted in the Dutch proceeding. The same reasoning would apply to a company that is a defendant in an infringement action brought in France, which may commence a proceeding in Brazil, aimed at producing evidence of the disclosure of the patented matter in the country before the priority date.

In view of the independent nature of said specific cautelar proceedings, as well as of the legal provisions on competence of the Brazilian Courts quoted above, it is possible to say that a company that does not have a substantive right in Brazil still may, as an interested party, commence directly in Brazil an anticipated production of evidence proceeding or a justification proceeding, as long as the acts to be proved have been performed in Brazil. But it is mandatory that the plaintiff shows a real and valid legalinterest in the requested measure.

It should be noted that the filing of preparatory proceedings in Brazil by an individual or a company that does not have a substantive right protected in Brazil, exclusively for the purpose of obtaining evidence to be used abroad, is unusual. However, we see no reason for not admitting, in theory, an initiative of this type, as long as the interest of the party is duly demonstrated.

Naturally, the effectiveness of evidence obtained in Brazil through a proceeding directly commenced by an interested party (or through any other means, including letters rogatory) is a matter to be determined under the laws of the country in which such evidence will be used.

4. The Use in Brazil of Evidence Obtained in Other Jurisdictions

The ordinary way of obtaining evidence in other jurisdictions to be submitted in Brazil is via international judicial cooperation, i.e., through letters rogatory. In this way, witnesses’ testimony, technical expertise, and other means of evidence that require the intervention of a foreign court will have the same effect in Brazil as those pieces of evidence gathered in Brazil itself.

According to Brazilian Law, the evidence of facts occurring in a foreign country shall be governed by the laws of such country (lex loci), as regards the means and formalities involved in producing the evidence (Introductory Law to the Civil Code, article 13). As a consequence thereof, if the applicable foreign law allows for the use of coercive measures for this purpose, and said coercive measures have been duly authorized by the foreign court, this will not impair the effectiveness and strength of the evidence in Brazil, as long as Brazilian public policy, including fundamental rights granted by the Federal Constitution, is not offended.

In a literal reading of the applicable legal provision, Brazilian Courts shall not admit evidence “unknown to the Brazilian law” (Introductory Law to the Civil Code, article 13). Doctrine and case-law construe this norm as a prohibition to those means of evidence that may be considered offensive to Brazilian public policy. Otherwise, even if “unknown to the Brazilian law”, the evidence shall be admitted.

After all, “[a]ll legal means of evidence, as well as those that are morally legitimate, even if not specified in this Code [of Civil Procedure], shall be considered able to prove the truth of the facts on which the claim or the defense is grounded” (CCiP, article 332).

But the letters rogatory are not the only way of obtaining valid evidence abroad. Brazilian Courts should not refuse any type of evidence, as long as such evidence, as well as the means under which it has been obtained, is considered morally legitimate in Brazil.

An example: Company “A” holds valid equivalent patents in Brazil and Japan and files an infringement action in Japan against Company “B”, which has been distributing the infringing articles in the Japanese territory. Within the scope of this Japanese proceeding, it comes to light that Company “B” has been importing the infringing articles from Company “C”, domiciled in Brazil. In view of this information, Company “A” may very well wish to file a second infringement action, this time before the
Brazilian Courts, against company “C”, grounded on the equivalent Brazilian patent. Obviously, Company “A” will not be prevented from submitting along with its complaint all documentary evidence (including technical expertise reports and the transcript of witnesses’ testimony) that it may have obtained in the Japanese proceeding, for the purpose, for instance, of substantiating a request for the search-and-seizure of the infringing objects produced in and exported from Brazil.

As mentioned above, Brazilian Courts will give to this evidence the relevance and the weight they deem adequate under the concrete circumstances of the case; they may deem it necessary to have the evidence obtained abroad repeated through a letter rogatory, or to confirm those facts by other means available in Brazil. But the utility of the Japanese evidence, in this example, is undeniable.

5. Conclusions

5.1. Protection to Intellectual Property rights is getting more and more effective in Brazil. Brazilian Courts have generally understood the importance of such protection as regards the insertion of Brazil in the international trade and the maintenance of foreign investments in the country.

5.2. Under Brazilian law, patentees may rely on specific cautelar (preparatory) proceedings, of both criminal and civil natures, including search-and-seizure actions and anticipated production of evidence proceedings, in order to obtain evidence of patent infringement by means of ex-parte orders. Besides, judges are granted broad cautelar powers to order a variety of measures, as they deem appropriate and necessary. Ex-parte orders require strong likelihood of success on the merits (fumus boni iuris) and risk of irreparable harm (or a harm that may turn out to be extremely difficult to be remedied) to the plaintiff’s rights if the order is not granted (periculum in mora).

5.3. The gathering of evidence in Brazil for litigation in other jurisdictions is generally achieved through letters rogatory, subject to the exequatur of the Superior Court of Justice. Judicial Cooperation Agreements between Brazil and the country of origin of the order is not a requirement for the execution of letters rogatory in Brazil.

But a foreign party that wishes to take evidence directly in Brazil and has a substantive right protected in Brazil can obviously take advantage of all applicable preparatory proceedings made available by the Brazilian Codes of Criminal and Civil Procedure, regardless of the party’s plans on where to submit the evidence gathered by means of said proceedings.

Under certain circumstances, it is even possible to say that a company that does not have a substantive right in Brazil still may, showing legal interest, commence directly in Brazil an anticipated production of evidence proceeding or a justification proceeding, as long as the acts to be proved have been performed in Brazil.

The value and effectiveness of evidence directly obtained in Brazil is a matter to be determined under the laws of the country in which such evidence will be used.

5.4. The ordinary way of obtaining evidence in other jurisdictions to be submitted in Brazil is via international judicial cooperation, i.e., through letters rogatory. In this way, witnesses’ testimony, technical expertise, and other means of evidence that require the intervention of a foreign court will have the same effect as if gathered in Brazil.

But letters rogatory are not the only way of obtaining valid evidence abroad. Brazilian Courts should not refuse any type of evidence, as long as such evidence, as well as the means under which it has been obtained, is considered morally legitimate in Brazil, which comprises full compliance with the fundamental rights and guarantees set out in the Federal Constitution.

It is most important to stress that Brazilian Courts shall give to each piece of evidence, either produced in Brazil or abroad, the relevance and weight they deem adequate under the concrete circumstances of the case, as judges are not bound by any particular piece of evidence.

* Presentation made at the 41st Congress of the International Association for the Protection of Intellectual Property – AIPPI, Boston, September 2008.

[1] Translations of the Brazilian IP Act into English, Spanish, French and German are available at the website of the “Instituto Nacional da Propriedade Industrial” (the Brazilian PTO): http://www.inpi.gov.br/menu-esquerdo/patente/pasta_legislacao.

[2] Brazil was among the 14 original signatories of the UPC, in 1883; its current version, resulting from the Stockholm revision, has been in force in Brazil since 1975, except for articles 1 to 12 and 28, which entered into force in 1992.

[3] In force since 1978.

[4] In force since 1994.

[5] IP Act, Article 43: “The provisions of the previous article [i.e., patent infringement] do not apply: I – to acts performed by unauthorized third parties privately and without commercial purposes, provided that they do not result in prejudice to the economic interests of the patentee; II – to acts performed by unauthorized third parties for experimental purposes, related to studies or to scientific or technological research; III – to the preparation of a medicine according to a medical prescription for individual cases, executed by a qualified professional, as well as to a medicine thus prepared; IV -to a product manufactured in accordance with a process or product patent that has been placed on the internal market directly by the patentee or with his consent; V – to third parties who, in the case of patents related to living matter, use, without economic purposes, the patented product as the initial source of variation or propagation for obtaining other products; and VI – to third parties who, in the case of patents related to living matter, use, place in circulation or commercialize a patented product that has been introduced lawfully onto the market by the patentee or his licensee, provided that the patented product is not used for commercial multiplication or propagation of the living matter in question”. IP Act, Article 45 – “A person that, in good faith, prior to the date of filing or of priority of a patent application, exploits its object in this country will be guaranteed without onus the right to continue the exploitation, in the previous form and conditions. Paragraph 1 – The right conferred under the terms of this article can only be ceded by transfer or leasing, together with the business of the undertaking, or the part thereof that has direct relation with the exploitation of the subject matter of the patent. Paragraph 2 – The right to which this article refers will not be guaranteed to a person who had knowledge of the subject of the patent due to disclosure under the terms of article 12, provided that the application was filed within 1 (one) year from the disclosure”.

[6] Article 209, caput, relates to the violation of industrial property rights and acts of unfair competition “that are not provided for in this law (the IP Act)”. However, paragraph 2 of article 209 obviously relates to the violation of industrial property rights provided for in the IP Act: “§ 2 – In the case of flagrant reproduction or imitation of a registered mark, the judge may determine the seizure of all the merchandise, products, objects, packages, labels and others that carry the falsified or imitated mark”. Thus, it is more than reasonable to say that also paragraph 1 should apply not only to the acts of violation of industrial property rights that are not provided for in the IP Act, but also to those that are provided for in the IP Act.

[7] But the incidental declaration that the patent is null and void is effective only between the parties, for the purpose of terminating the claim with the resolution of the merits. The cancellation of the patent can only be achieved through an independent cancellation action, filed before the Federal Courts against the patent owner and the INPI (PTO) (IP Act, article 205).

[8] As a general rule, parallel imports are not allowed in Brazil. There is, however, a significant exception to this general rule, set out in IP Act, section 68, paragraph 4: “If the patent is exploited in Brazil by means of imports, as well as in the case of the imports referred to in the preceding paragraph [paragraph 3 refers to compulsory licenses], third parties shall be also allowed to import a product manufactured according to a process patent or a product patent, as long as such product had been introduced into the market directly by the patentee or with the patentee’s consent.” In other words, parallel imports are not considered unlawful if the patented product is not manufactured in Brazil, but rather imported by the patentee or with the patentee’s consent.

[9] For an broader analysis of the Brazilian legal system, see “Transnational Litigation: A Practioner’s Guide”, John Fellas Editor, Hughes, Hubbard & Reed LLP, New York, New York, Oceana Publications, Inc. NY, volume 1, BRAZIL, by VARGAS, Manoel, LIRA, José-Ricardo Pereira, MARIANI, Natalie Sequerra, and ALMEIDA, Ricardo Ramalho, LOBO & IBEAS Rio de Janeiro, issue of October 2003.

[10] Except for one single case, which is not relevant to this presentation: the crime specified in the IP Act, article 191: “Reproducing or imitating wholly or in part, in a manner that may lead to error or confusion, armorial bearings, crests or official public distinctions, be they national, foreign or international, without the necessary authorization, in a mark, title of establishment, commercial name, insignia or advertising sign, or using such reproductions or imitations for economic purposes”.

[11] Prevailing case-law understands that the 30-day term shall be counted from the date on which the plaintiff has been notified of the confirmation of the experts’ report by the criminal judge, rather than from the date of the confirmation itself.

[12] “Ações cautelares”, in Portuguese. In the absence of an exact translation into English, the original Portuguese expression was adopted.

[13] By Federal Law no. 8,952/1994.

[14] If the plaintiff, under a request for the anticipation of the envisaged decision on the merits, is actually requesting a provision of cautelar nature, the judge may grant the relevant cautelar provision, provided that the applicable legal requirements are fulfilled (CCiP, article 273, paragraph 7). But the vice versa is not necessarily true, as the law does not provide for the admissibility of cautelar proceedings in lieu of a request for the anticipation of the envisaged decision on the merits.

[15] This specific proceeding is also applicable to the search and seizure of individuals, but, of course, not in IP litigation.

[16] The Las Leñas Protocol, Signed on June 27, 1992; approved by Legislative Decree no. 55, of April 19, 1995; promulgated by Presidential Decree no. 2067, of November 12, 1996. The Ouro Preto Protocol, Signed on December 16, 1994; approved by Legislative Decree no. 192, of December 15, 1995; promulgated by Presidential Decree no. 2626, of June 15, 1998; effective since April 18, 1997.

[17] Interamerican Convention on Letters Rogatory in civil and commercial matters, signed on January 30, 1975; approved by Legislative Decree no. 61, of April 19, 1995; promulgated by Presidential Decree no. 1899, of May 9, 1996; Additional Protocol to the Interamerican Convention on Letters Rogatory in civil and commercial matters, signed on May 8, 1979; approved by Legislative Decree no. 61, of April 19, 1995; promulgated by Presidential Decree no. 2022, of October 7, 1996.

[18] An individual shall be considered domiciled in the place of his/her permanent residence (or in the place of each of his/her permanent residences, if more than one); as regards the relations arising from the individual’s professional activity, the place in which such professional activity is performed (or each of the places in which the professional activity is performed) shall be also considered a domicile. A legal entity shall be considered domiciled in the place where its Board of Officers is located or in the venue appointed in the entity’s articles of association or Bylaws. If the company performs its business in different places, each of them shall be considered a domicile in what concerns the acts therein performed (Civil Code, articles 71, 72 and 75).