Article | Updates on Brazilian IP Issues – Industrial Design

The year 2023 brought many changes to the Brazilian process of industrial design. It started with the adhesion of the Hague Agreement in February 2023.

Further to the adhesion, in July, the BRPTO published Ordinance No. 25/2023, which set forth the registration of industrial designs under the Hague Agreement. The Hague System aims to provide a system that allows the protection of industrial designs from a single international filing. As of Brazil’s adhesion to the system, international applicants will be able to designate Brazil as a contracting party, and national applicants will be able to register the design at any one of among more than 70 contracting parties to protect their intellectual assets according to their business strategies. All this with a simplified process and reduced costs.

The relevance of this ordinance is that it came to establish and describe definitions, and proceedings to the registrations designating Brazil.

The Ordinance also establishes a deadline of 6 months for the BRPTO to forward to the International Bureau the notification of rejection or the declaration of granted protection.

As another relevant aspect, the Hague System establishes that the assessment of formal aspects occurs concomitantly within the processing of the international application by WIPO. Once the application enters the national phase, it is permissible to articulate only material requirements, aligning with the prevailing practices of the respective country, and no formal requirements may be imposed.

Besides the adhesion to the Hague System, this year we also had the publication of the 2nd edition of the Industrial Design Manual. This edition brought some news to the industrial designs’ prosecution, in terms of what the BRPTO will allow. This was expected since the adhesion to the Hague System was to harmonize the BRPTO’s understanding with the international practice, as stated in the Guidelines of the Hague System available on the WIPO website.

Some relevant changes compared to the previous Manual include the need to differentiate, through graphic resources (e.g.: continuous lines, dashed lines, or colorization), what is claimed from what is contextual. This understanding is closer to the guidelines of the WIPO Hague System.

Another difference is now the possibility of registering a typographic family, which was not allowed in the previous edition.

The inclusion of partial or full trademark representation is now also allowed, noting that this inclusion does not extend any trademark rights to the owner of the Industrial Design registration. The current Manual also brought the possibility of protecting Industrial Designs that include textual elements of any nature, in any language, which, in accordance with the previous edition, was not acceptable. The inclusion of characters, words, or textual elements that refer to indications, dimensions, measurements, signatures, titles, stamps, etc., is still not allowed, and their removal can be requested by the Examiner.

Referring to the registration of dynamic graphical interfaces, it is established that it should be made through the representation of static figures in the order of display. In other words, the frames must be presented.

Some peculiarities of Brazilian practice remain in the new Manual, such as the limitation of 20 variations per ID registration application, despite the Hague Agreement limitation of 100 variations. Important to remember that this limitation of 20 variations is a restriction presented in Article 104 of Law 9,279 of 1996 (IPL) and is in accordance with the provisions of the Geneva Act, which allows the contracting parties to make declarations regarding legal and operational aspects, that enable adherence to the Hague Agreement without necessitating legislative changes.

The new edition of the Manual also brought a new section dedicated to the Hague Agreement, presenting an overview, information on registration, and other information on means of communication, requests, deadlines, and compensation.

Authors: Georgia Chicoski and Tainara Barbosa