Brazil - Intellectual Property Lawyers & Law Firms - Latin America - Chambers and Partners
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Latin-America Guide

Intellectual Property — Brazil

Overview

BRAZIL: An Introduction to Intellectual Property Contributed by Philippe Bhering, Bhering Advogados

BRAZIL – INTELLECTUAL PROPERTY

1. International Treaties

Brazil is signatory to major international IP treaties, including (i) the Paris Convention for the Protection of Industrial Property, (ii) the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement), (iii) the Patent Cooperation Treaty (PCT), (iv) the Berne Convention for the Protection of Literary and Artistic Works, (v) the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations, (vi) the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, (vii) the Strasbourg Agreement Concerning the International Patent Classification, (viii) the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, (ix) the UPOV Convention, and (x) the WIPO Convention.

As for trade mark law treaties, Brazil is not yet signatory to the Madrid Protocol. In recent years, there have been positive moves towards accession to the Protocol. The draft Accession Agreement is currently before the Office of the Presidential Chief of Staff (Casa Civil), pending submission to the National Congress.

2. National Laws

In Brazil, the provisions of trade mark, patent, design and unfair competition law are collectively set out in the Brazilian Industrial Property Law (Law No. 9,279 of May 14, 1996, “BIPL”). Of note regarding copyright and software law are the Brazilian Copyright Law (Law No. 9,610 of February 19, 1998, “BCL”) and the Brazilian Software Law (Law No. 9,609 of February 19, 1998, “BSL”), respectively.

In general, Brazilian IP laws apply to nationals of, or persons domiciled in, a country that grants Brazilians or persons domiciled in Brazil equal or equivalent rights under the laws of that country.

The BIPL regulates rights and obligations regarding patents (for inventions and utility models), industrial designs, trade marks, geographical indications, technology transfer agreements and the repression of unfair competition. The BCL, in turn, regulates the rights over literary and artistic works, as well as neighbouring rights. The BSL sets out provisions for the protection of intellectual property rights pertaining to computer programs and their sale in this country.

Responsibility for the registration of trade marks, patents, industrial designs and software, as well as the registration of licensing agreements, lies with the Brazilian Patent and Trade Mark Office, known in Portuguese as the Instituto Nacional da Propriedade Industrial (INPI). The INPI is a government agency under the auspices of the Ministry of Development Industry and Foreign Trade (MDIC). Its main function is the management of the Brazilian system for the concession of intellectual property rights. Works protected under the Copyright Law, depending on their nature, shall be registered with other different public bodies, such as the National Library or the Music School of the Federal University of Rio de Janeiro.

A trade mark registration remains in effect for ten years commencing with the date of its grant, and may be renewed for equal and successive periods. An industrial design registration remains in force for a period of ten years from the date of filing, being extendable for three successive periods of five years each. As for patent registration, an invention patent remains in force for a period of 20 years, and a utility model patent for a period of 15 years from the date of filing (and a minimum of ten years (patents) and seven years (utility models) from the date of grant).

Copyright registration is optional for the purposes of protection. If the work is original in accordance with the terms of the BCL, it will be afforded copyright protection regardless of registration. According to the BCL, the economic rights of the author are protected for 70 years from the first day of January of the year following his/her death. The “moral” rights involved are inalienable and irrevocable, i.e. they cannot be cannot be transferred, licensed or waived.

3. Enforcement of IP Rights

The BIPL provides that infringement of trade mark, design, patent and geographical indication rights and acts of unfair competition constitute both a civil wrong (tort) and a crime. Likewise, copyright and software infringement are both civil wrongs (tort) and crimes. Hence, the injured party is entitled to rely on both civil and criminal measures in order to enforce its rights.

As for the civil proceedings, the injured party may file a lawsuit seeking the cessation of the infringing act, coupled with a claim for damages. The lawsuit may also include a request for an ex parte preliminary injunction with a view to immediate cessation of the harmful conduct, pending a decision on the merits. The plaintiff may also seek the imposition of a daily penalty for failure to abide by the preliminary injunction.

In addition to infringement actions, the BIPL makes provision for the setting aside of trade marks, designs and patent registrations which have been unduly appropriated by third parties. In such a nullity action, the interested party may include in its initial application a request for an immediate stay of the effects of the registration in question, pending a final decision on the substantive issue of whether or not there has been undue appropriation.

Infringement actions must be filed before the state courts, whereas the nullity actions referred to above are heard by federal courts. This is because INPI is automatically a party to all nullity actions, and whenever a government agency is a party to a lawsuit, the action must be filed before the federal courts.

Criminal remedies prescribed by the BIPL, the BSL and the Criminal Code include imprisonment or the imposition of a fine on the infringer. In terms of criminal proceedings, one very important provision is the possibility of filing a preliminary criminal search and seizure action, aimed at gathering evidence of acts of infringement and avoiding the destruction or hiding of evidence by the infringer.

Border control mechanisms also feature as part of the Brazilian system of enforcement of IP rights. Federal Decree No. 6759 of February 5, 2009 includes authorisation for the customs authority to seize any products it considers to bear altered or imitated marks.

Of note in this context is the increase in recent years in the number of surveillance and enforcement operations conducted by customs and federal police agents. Customs authorities have also been implementing anti-counterfeit training sessions and workshops for customs agents. These measures have led to a significant increase in the effectiveness of the operations conducted.

4. Updates

Simplified procedure for the granting of patent applications

The Brazilian PTO, together with the Brazilian Ministry of Industry, Foreign Trade and Services (MIFTS), opened a public consultation on July 31, 2017, regarding a new proposal for a simplified procedure for the granting of patent applications. The objective of this new proposed procedure, according to the BPTO, is to guarantee transparency to the process, as well as align the measures to fight the backlog in the examination of patents with the demands from society. The proposal prescribes that patents whose new applications or requests to enter the national phase were filed up until the date of the publication of the new proposal will be granted within 90 days, as long as they fulfil certain requirements and had not received reasoned subsidies from third parties. Patent applications involving pharmaceutical products and processes are excluded from this simplified procedure. The interested parties had until August 21, 2017, to send their suggestions and, after such date, the proposals will be analysed by the BPTO and the MIFTS.

New Guidelines for the Examination of Patent Applications relating to chemical inventions

On 2 January 2018, the BPTO published the Resolution No. 208/2017, adopting the New Guidelines for the Examination of Patent Applications relating to chemical inventions. The new guidelines represent a consolidation of BPTO’s practice on the chemical and pharma fields, notably in connection with how a compound shall be claimed; determination of specific rules on how applications comprising second medical use claims in vivo tests must be disclosed in the specification for compliance with enablement requirement; and definition on how polymorph applications must be drafted in order to be sufficiently described.

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Dannemann Siemsen - Intellectual Property Department

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Band 1

第一等

Chambers Commentary (based on the Chambers research)

What the team is known for Market-leading practice admired for its exceptional capabilities across the full range of IP services, spanning patent, trade mark and industrial design infringement lawsuits before the Brazilian courts, with particular experience in those involving oil and gas, automotive and agribusiness companies. Also boasts recognised expertise advising an impressive portfolio of national and international pharmaceutical companies on patent litigation and IP agreements between private and publicly owned laboratories.

Strengths One market source demonstrates their praise for the firm by claiming: "They are the best all-round IP firm, working with litigation, prosecution and consulting mandates."

Clients also endorse the team's capabilities: "They boast in-depth technical knowledge and are always interested in fully understanding the client's business."

Work highlights Assisted Ballet Makers with a litigation proceeding to cancel the registration of its international trade mark 'Capezio' by Rommel & Halpe.

Notable practitioners

Senior statesman Peter Dirk Siemsen is widely respected for his established track record advising leading corporate clients on the full range of IP law matters, including patents, trade marks, copyright and agreements.

Eminent practitioner and head of department Luiz Henrique do Amaral is recognised by market sources as "one of the most important lawyers in the firm." He is renowned as an expert in franchising matters and routinely advises both national and international companies on IP-related cases.

Well-regarded partner Gustavo de Freitas Morais is referenced by clients as "a very knowledgeable, business-oriented, swift and available lawyer," and the source adds that "he keeps up to date with the life sciences market and legislation." Market observers also praise him, by saying: "He is an excellent litigator and strategist."

Partner and academic Rodrigo Borges Carneiro maintains an experienced IP practice and regularly assists clients from the media and entertainment sector with matters related to trade marks, copyrights, geographical indications and technology transfer agreements.

Market sources endorse partner Attilio Gorini and point out that "he has significant activity in copyright mandates." He is particularly noted for his expertise in the media and entertainment industry, as well as copyright and trade mark issues.

"Very good litigator" Joaquim Eugênio Goulart is recognised by market sources for his visible assistance to clients in connection with contentious issues arising from the practice area. He also boasts acumen in trade mark and software protection matters.

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Gusmão & Labrunie - Intellectual Property Department

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Band 1

第一等

Chambers Commentary (based on the Chambers research)

What the team is known for Pre-eminent firm renowned for its expertise in patent infringement proceedings and application procedures. Frequently retained by market-leading pharmaceutical, chemical and consumer goods companies for its impressive track record handling strategic IP litigation and consultancy mandates. Additionally noted for its activity on behalf of clients from the biotechnology and electronic engineering sectors, as well as for its work obtaining a well-known status for trade marks before the Brazilian Patent & Trade Mark Office (BPTO).

Strengths A client highlights the range of their IP capabilities by mentioning that "they do all sorts of IP work for us, from clearance to prosecutions, opposition to conflicts, as well as general portfolio work. They are incredible."

Market commentators enthuse: "They are one of the only firms that can work with patents for international clients in all sectors."

Work highlights Successfully represented Danone in a trade dress infringement lawsuit filed by Nestlé in connection with a Greek yogurt produced by the client.

Notable practitioners

Distinguished co-head of department José Roberto Gusmão is vastly respected in the IP practice area for his long-standing experience representing leading multinational companies in unfair competition disputes and cross-border patent litigation. He draws upon his former experience as the president of the BPTO to offer skilled advice on a myriad of IP mandates, including trade marks, domain names and copyrights.

Highly respected partner Jacques Labrunie is acknowledged by market commentators as "an excellent lawyer who maintains a high level of activity in this practice area." He is noted for his expertise handling patent and trade mark infringements and also boasts particular prowess in relation to unfair competition, geographic indications and copyright issues.

"Very good lawyer" João Vieira da Cunha is often retained by a myriad of corporate clients to provide counsel on unfair competition and advertisement disputes, in addition to trade mark infringement cases. Clients also report that "he is an efficient team leader."

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Kasznar Leonardos Intellectual Property - Intellectual Property Department

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Band 1

第一等

Chambers Commentary (based on the Chambers research)

What the team is known for Acclaimed IP boutique regularly sought out for its expertise in IP litigation, with particular acumen handling patent and industrial design infringement matters, as well as trade mark and patent procurement. Regularly advises clients on IP rights and the filing of complex appeals before BPTO and the Brazilian Food and Drug Agency (ANVISA). A broad range of national and international clients also benefit from its assistance with the registration of trade marks and domain names and mandates related to copyright law.

Strengths Clients attest: "They are very good technically, understand the needs of their clients and have a very interesting business outlook on legal issues."

Other commentators add to their praises: "The team is timely in their responses, experienced and knowledgeable."

Notable practitioners

Acclaimed founding partner Elisabeth Kasznar Fekete draws upon her long-standing experience in this practice area to provide advice on strategic IP litigation and consultancy mandates. Particularly well-equipped to undertake cases related to trade marks, unfair competition, copyright law and trade secrets, as well as assisting with the establishment of anti-counterfeiting programmes. Market sources also admire her work as an academic.

Revered name partner Gabriel Francisco Leonardos heads the Rio de Janeiro office and maintains a highly respected practice in the market due to his extensive experience in IP litigation and consultancy, with particular acumen in cases related to licensing agreements, software rights, patents, trade marks and copyright law. Clients also benefit from his skilled advice on trade mark prosecution and IP arbitration.

Clients appreciate up-and-coming partner Rafael Lacaz Amaral's assistance: "In a recent litigation case, he demonstrated great knowledge of the matter," and add: "He is very proactive and offers efficient response times."

About the Team (content provided by Kasznar Leonardos Intellectual Property)

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Bhering Advogados - Intellectual Property Department

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Band 2

第二等

Chambers Commentary (based on the Chambers research)

What the team is known for Well-known IP firm with offices in Rio de Janeiro, São Paulo and Curitiba. Maintains an active practice across the full range of IP services, covering trade marks, patents, trade secrets, and assists with anti-counterfeiting, enforcement, agreements and litigation to an impressive roster of high-profile multinational clients hailing from the US, Europe and Asia. Leading companies from the automotive, pharmaceutical, entertainment and electronics industries benefit from its skilled advice.

Strengths One client recommends the firm, saying: "They are efficient, experienced, easy to communicate with, solution-oriented, pragmatic and have a very good understanding of the European legal system."

Work highlights Successfully represented Merck in a trade mark infringement lawsuit against Serumlab for its unauthorised use of the 'Sigma-Aldrich' and 'Vetec' trade marks.

Notable practitioners

Significant founding partner Pedro Bhering is highlighted by one client as "a lawyer who is very easy to work and communicate with," while another market source attests that "he is very intelligent." He is often instructed by multinational corporations to assist with trade marks, licensing, technology transfer and copyright matters.

"Very active and sharp" partner Philippe Bhering is praised by one source due to his "exceptional soft skills, hands-on approach and clear advice," while another client recommends his "business-oriented perspective dealing with disputes." He is particularly popular amongst German companies.

About the Team (content provided by Bhering Advogados)

Founded in 1978, in Rio de Janeiro, specializing in Intellectual Property and related matters, including trademarks, patents, industrial design, copyright and neighboring rights, information technology law, counterfeiting and unfair competition, licensing, transfer of technology and IP litigation;

Representation of multinational corporations particularly companies based in the U.S.A, Europe and Asia and their Brazilian subsidiaries in various industrial sectors; automobile, chemical, biotech, aviation, engineering, pharmaceutical, sports, entertainment, telecommunications, software, fashion, among others;

Among the very few Intellectual Property Law firms in Brazil with branch offices. The main office is in Rio de Janeiro (close to BPTO); branch offices are in Curitiba and São Paulo;

German desk set up at the end of 2010 and French desk set up in 2016;

Anti-Counterfeiting Department engaged in conducting investigations on the manufacture and distribution of counterfeit products; carrying search and seizure operations (raids); sending Cease and Desist Letters; preparing and lodging civil and criminal lawsuits; adopting administrative measures before the Customs Authorities of Brazilian ports and airports; and developing and implementing customised training programs before the Customs Authorities;

Internal patent translation department with 22 professionals among graphic designers, translators, proofreaders and specialized is various technology fields.

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BMA – Barbosa, Müssnich, Aragão - Intellectual Property Department

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Band 2

第二等

Chambers Commentary (based on the Chambers research)

What the team is known for Respected department within a full-service firm recognised for its solid advice to major players from the pharmaceutical, electronics and luxury goods industries on the protection, management and enforcement of all types of IP rights, including patents, trade marks, copyrights, trade secrets and industrial designs. Further admired for its strength in related fields, such as advertising, franchising and e-commerce. Hypermarcas and Universal Music are new client wins.

Strengths Impressed commentators underline: "They provide an excellent service, with quick responses and good knowledge of IP law."

Work highlights Assisted L'Oréal with a trade mark opposition lawsuit against GHF Cosméticos in relation to the defendant's registration of the trade mark 'Colorshow.'

Notable practitioners

Recognised co-head of department Antonella Carminatti is regularly hired due to her skilled capabilities in IP litigation, with particular acumen in cases related to patents, trade marks and copyrights. She is also well equipped to deal with anti-counterfeiting programmes and IP aspects in connection with transactions, including M&A deals and related due diligence.

Key partner Claudia Schulz "differentiates herself from other lawyers because of her focus and attitude, excellent service and expertise dealing with companies from the US and the UK," one source comments. She regularly assists with IP protection strategies, franchising and agreements matters, in addition to trade mark disputes.

Up-and-coming partner José Eduardo Pieri is recognised by multiple sources as "a very good lawyer," due to his experience with trade marks and transactional IP issues. Clients add that "he offers a straightforward service."

About the Team (content provided by BMA – Barbosa, Müssnich, Aragão)

The combination of our scientists' and engineers' technical skills and the legal expertise of our lawyers means that BMA PI provides clients with a high-quality multidisciplinary service that is unmatched in the Brazilian market.

We provide a full range of professional services in the protection, management and enforcement of all types of intellectual property rights — patents, trademarks, copyrights, trade secrets, industrial designs, domain names and plant varieties, as well as related fields such as advertising, franchising, e-commerce, entertainment, geographical indications and appellations of origin. Our range of experience covers every industry and technology – from electrical and computer technology to luxury goods, industrial manufacturing, consumer products, biotechnology, pharmaceuticals and chemicals.

BMA IP's team has won an international reputation for its ability to provide personalized service aimed at achieving our clients' objectives through the highest standards of quality and efficiency.

Our practice is worldwide through a carefully tested global network of firms. As a result, we are able to direct and coordinate the international IP portfolios of our clients, assuring them of the same strategic focus and technical capabilities that we provide in Brazil. Likewise, foreign law firms are confident that their clients will find uncompromising excellence when they call on BMA PI for assistance in prosecution, litigation and consultation matters in Brazil.

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Licks Attorneys - Intellectual Property Department

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Band 2

第二等

Chambers Commentary (based on the Chambers research)

What the team is known for Well-regarded firm who rises in the rankings due to impressive client feedback with regard to its skilled litigation practice at both administrative and judicial levels. Companies from the information technology, pharmaceutical and telecommunications sectors benefit from its assistance with contentious matters in connection with patents, unfair competition and trade secrets, as well as strategic consultancy. Syngenta, Nokia and Huawei are new clients.

Strengths One source enthuses: "They are very skilled in complex litigation, appeals and strategy. They convey complex issues in a detailed and straightforward fashion, in addition to being very responsive."

Work highlights Defended Ericsson Telecomunicações in a patent infringement lawsuit filed by BINA with regards to the caller-ID technology registered by the plaintiff.

Notable practitioners

"Great litigator" Otto Licks enjoys outstanding feedback from clients, who value his "availability at all times and ability to go all out and provide innovative solutions," adding that "these are the reasons why we instruct him with our most complex cases." Licks has vast experience representing clients on strategic cases in connection with international patents.

About the Team (content provided by Licks Attorneys)

Licks Attorneys is a Brazilian top tier law firm, recognized for successfully handling large and strategic litigation and counselling on Intellectual Property, Life Sciences, Food & Drug, Regulatory, Internet Law, Data Privacy and Cyber Crime projects in the country.

Licks Attorney’s team, over the last years, has handled complex litigation, strategic counselling, policy making, IP prosecution and regulatory matters, representing and giving advice to global companies from different industries seeking to protect blockbusters and strategic interests in Brazil.

With offices in Rio de Janeiro, Sao Paulo and Tokyo, the firm has the background, experience and technological capabilities to serve companies of all sizes.

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Montaury Pimenta, Machado & Vieira de Mello - Intellectual Property Department

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Band 2

第二等

Chambers Commentary (based on the Chambers research)

What the team is known for Rio-based IP boutique well regarded for its active assistance with a comprehensive range of IP issues. Maintains an established position in the market due to its solid work in trade mark and patent prosecution and enforcement. Frequently sought out by prominent clients hailing from the pharmaceutical and chemical sectors to handle litigation mandates, including infringement actions, in addition to cross-border IP cases.

Strengths Market sources endorse their capabilities, saying: "They are well known for their patent prosecution work and are particularly experienced with industrial property patents."

Notable practitioners

Much-admired named partner Luiz Edgard Montaury Pimenta maintains a respected IP practice due to his significant track record advising clients on trade mark, copyright and software issues. He additionally offers considerable acumen in IP issues related to advertisement, internet, marketing and contracts.

Experienced partner Eduardo Magalhães Machado is acclaimed by sources as "a very good lawyer." He boasts a notable track record in the IP market and specialises in contracts, software and copyright law. Another market commentator claims: "He is very visible undertaking negotiations on behalf of clients."

About the Team (content provided by Montaury Pimenta, Machado & Vieira de Mello)

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Pinheiro Neto Advogados - Intellectual Property Department

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Band 2

第二等

Chambers Commentary (based on the Chambers research)

What the team is known for Much-admired firm with strong capabilities in the IP market for its expert advice on trade mark prosecution, unfair competition and IP litigation. Maintains a strong focus on the technology sector, representing an impressive roster of high-profile multinational companies on both transactional and contentious mandates. Additionally experienced providing counsel on IP issues related to tax, labour and corporate law. New clients include Nubank, Goldman Sachs and BV Financeira.

Strengths One commentator praises the firm, and says: "I feel that they are an extension of our internal legal department, as they know us so well and speak our language, in addition to offering a very reliable service."

Work highlights Defended Twitter in a trade mark violation lawsuit filed by Periscope Design in connection with the client's use of the term 'Periscope' to name an application.

Notable practitioners

Established partner André Zonaro Giacchetta is held in high esteem by clients, who describe him as "a great and very calm lawyer," and attest: "He always brings different opinions to cases and is also very good evaluating risks and opportunities." He regularly provides counsel on IP disputes, copyright law and technology transfer agreements.

Solid partner José Mauro Machado is endorsed by market sources as "a very good litigator who delivers high-quality work." He often advises clients hailing from the social media and technology sectors on trade marks, patents and copyright matters.

Up-and-coming partner Márcio Junqueira Leite garners praise from clients: "He is a great and available lawyer, who has a very technical approach." He specialises in IP litigation connected to the tech and media sectors.

About the Team (content provided by Pinheiro Neto Advogados)

Pinheiro Neto Advogados has over 45 years of experience in the intellectual property practice including trademarks, patents, industrial drawings, scientific, literary and artistic works, computer programs etc. We advise our clients on a wide variety of settings where in-depth knowledge is the key to success.

The intellectual property group has a comprehensive national and international experience. Many practitioners are members of local and international intellectual property entities.

Our intellectual property group has wide experience in civil and criminal litigation, in particular lawsuits involving unfair competition created by piracy on the Internet, as well as lawsuits for nullity of patents, industrial drawings and trademarks unduly granted by the National Industrial Property Institute (INPI).

Our firm offers the necessary structure for registration of trademarks, patents, industrial drawings, computer programs, copyrights and domain names. The firm works in coordination with major law firms overseas, providing our clients with effective and agile services around the globe.

Pinheiro Neto Advogados also advises clients on disputes involving comparative advertising, both in ethics-related complaints brought by the Advertising Self-Regulatory Council (CONAR) and in infraction notices issued by the National Public Health Agency (ANVISA) with respect to advertising materials for medical drugs.

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Demarest Advogados - Intellectual Property Department

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Band 3

第三等

Chambers Commentary (based on the Chambers research)

What the team is known for Established full-service firm regularly instructed by major fashion, retail and technology companies to advise on the full spectrum of IP matters. Offers significant experience in patent, copyright, trade mark and franchising matters, in addition to conducting IP due diligence related to corporate transactions and IP litigation. New clients include Diebold Nixdorf, CRH and Aerolíneas Argentinas.

Strengths "They are detail-oriented, focused on clients' needs, efficient with their time and responsive," clients report, and add: "They are quick to provide us with answers and to deliver solutions."

Work highlights Instructed by Garmin to manage its trade mark portfolio, including the protection of several trade marks in Brazil.

Notable practitioners

Noteworthy head of department Tatiana Campello impresses commentators with her "broad experience in the practice area and ability to have technical discussions with the engineers about specific agreements, revealing a vast knowledge of the technologies discussed." Market sources also praise her for being "a brilliant thinker, very practical and a wonderful leader."

About the Team (content provided by Demarest Advogados)

Agreements, trademarks, patents, franchises, copyright, software and all procedures related to protection and management of the intellectual property, with practical point of view of use of the intangible assets in corporate business. Demarest relies on an extensive network of law firms abroad to protect and monitor industrial property rights worldwide.

Among the activities conducted by Demarest, the following stand out:

  • preparation and negotiation of agreements involving licensing and assignment of intellectual properties rights; technology transfer; technical services provision; franchising; software; use of image; as well as license for use of "content";​
  • assistance in all procedures for the registration and protection of trademark, patent, industrial design, software, copyright etc.;
  • full assistance and monitoring of administrative, civil or criminal measures involving violations of intellectual property rights (counterfeit, piracy, plagiarism, unfair competition etc.);
  • specialized legal due diligence review in the Intellectual Property area.

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Di Blasi, Parente & Associados - Intellectual Property Department

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Band 3

第三等

Chambers Commentary (based on the Chambers research)

What the team is known for Dedicated IP boutique that maintains a long-standing practice in the field. Draws on an in-house team of engineers and biologists to cover the full range of IP services, including the registration, monitoring and defence of IP rights. Also excels in litigation mandates, patent enforcement and copyrights and advertisement issues. C&C Casa e Construção and Nagra France are new clients.

Strengths Sources say: "They are a very diligent, committed and reliable outside counsel."

Work highlights Retained by Fibria Celulose to file an anticipatory discovery motion against Sergomel Mecânica Industrial in order to verify the potential infringement of its IP rights.

Notable practitioners

Known name partner Gabriel Di Blasi enjoys a recognised position in the market, as sources laud him as "a very competent lawyer, engineer and author, who maintains great levels of activity." He regularly assists clients with patent prosecution, in addition to licensing, franchising and ANVISA-related regulatory matters.

About the Team (content provided by Di Blasi, Parente & Associados)

Di Blasi, Parente & Associados has been providing legal services in Brazil and around the world to businesses and innovators for 30 years. A full-service intellectual property firm, it specializes in patent and trademark prosecution and enforcement, copyright registration, business transactions, regulatory law, sports and entertainment law, unfair competition, franchising and corporate law. The mission of the firm is to provide superior services to clients - with agility, competency and security.

We provide a full range of Intellectual Property solutions in Brazil to help our clients acquire their IP rights, monitor them, protect and defend them. Our highly-skilled team of attorneys and technical specialists, including many scientists and engineers, work diligently to provide competent and trustworthy results for everything from preliminary clearance searches and freedom to operate reports to full drafting and filing services and judicial measures, both in Brazil and around the world.

Some of the fields that our team at Di Blasi, Parente & Associados specifically focus on are: automotive, communications, consumer goods, electronics, energy, food & beverage, information technology, life sciences - biology, biotechnology, chemistry, environmental science, genomics, medical devices, mining, agriculture, pharmaceutical sciences, media and sports & entertainment.

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Murta Goyanes Advogados - Intellectual Property Department

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Band 3

第三等

Chambers Commentary (based on the Chambers research)

What the team is known for Experienced team covering a wide range of IP law matters, including trade marks, patents, copyrights and related litigation cases. Often retained by major companies from the retail and media sectors to assist with domain names, licensing and franchising agreements. Additional strength managing trade mark and patent portfolios and handling prosecutions. Globosat and Klabin are new client wins.

Strengths Commentators appreciate that "they are very quick to respond and the service provided is excellent," also stating: "They run cases very efficiently and are always up-to-date in relation to new developments in the legislation."

Work highlights Acted on behalf of Alpargatas in the appeal filed before BPTO to obtain the well-known status for the 'Havaianas' trade mark.

Notable practitioners

Antonio Murta is described by one source as "a lawyer who is very aware of the general IP legal landscape," while another client adds: "He is a good litigator, who is easy to work with, very responsive and knowledgeable." His portfolio spans advice on trade marks and unfair competition, in addition to IP litigation.

About the Team (content provided by Murta Goyanes Advogados)

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Trench Rossi Watanabe (in cooperation with Baker McKenzie International) - Intellectual Property Department

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Band 3

第三等

Chambers Commentary (based on the Chambers research)

What the team is known for Noteworthy department boasting considerable experience in a wide range of IP work. Routinely advises its client roster comprising major pharmaceutical and technology companies on trade mark prosecution, unfair competition and franchising matters. Also offers solid assistance with IP litigation cases before the judicial courts, BPTO and ANVISA. Pfizer and Abbott Products Operations are new clients.

Strengths Clients highlight: "The multidisciplinary team is extremely qualified," adding: "They provide prompt responses and are very helpful explaining issues to our head offices abroad."

Work highlights Represented Allergan against a Brazilian pharmaceutical company in an unfair competition lawsuit brought to prevent the launch of generic and similar products with pending patent applications.

Notable practitioners

Interviewees are impressed by partner Flavia Rebello Pereira and assert: "She has in-depth legal knowledge, answers queries promptly and proposes excellent solutions to critical issues." She actively assists with IP protection, trade mark prosecution and technology transfer agreements.

Market commentators endorse partner Flávia Maria Vasconcelos Pereira as "a good practitioner working with trade mark and patent issues." She is frequently instructed by clients hailing from the pharmaceutical and luxury goods sectors to manage IP portfolios.

About the Team (content provided by Trench Rossi Watanabe (in cooperation with Baker McKenzie International))

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Veirano Advogados - Intellectual Property Department

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Band 3

第三等

Chambers Commentary (based on the Chambers research)

What the team is known for Significant IP department drawing upon the firm's full-service capabilities to offer a wide range of IP-related services. Frequently hired to provide advice on IP matters, including patent prosecution and licensing agreements. Also experienced in representing clients from the technology, luxury goods and hospitality sectors in litigation cases involving trade marks, patents and unfair competition.

Strengths One satisfied client comments: "The IP department is extremely practical, knowledgeable and able to provide swift answers to important questions."

Notable practitioners

Seasoned partner Valdir de Oliveira Rocha Filho is held in high esteem by market sources, with one peer claiming: "I respect him greatly for the long-standing career he built." He offers a broad expertise in IP law, including prosecution and litigation cases involving trade marks, industrial designs, patents and copyrights. One interviewee reports that "he is visible performing trade mark registrations."

Significant co-head of department Fábio Luiz Barboza Pereira is often instructed by clients hailing from the media, entertainment and information technology sectors to advise on transactional IP matters, with particular acumen in copyrights and franchising.

About the Team (content provided by Veirano Advogados)

The Veirano Advogados intellectual property practice group is recognized for its experience and in-depth knowledge of a market in a constant state of transition. With 25 dedicated professionals, we offer services to domestic and foreign companies in all market segments, both in Brazil and abroad.

We provide IP-related legal services to assist our clients in protecting corporate assets such as:

  • Computer programs​
  • Copyright
  • Domain names
  • Know-how
  • Industrial designs
  • Patents
  • Privacy and personal rights
  • Proprietary information
  • Technologies
  • Trade secrets
  • Trademarks

The breadth of our practice includes expertise in: 

  • Advertising - clearance of advertising campaigns and defense of procedures before the Brazilian advertising self-regulatory council (CONAR)
  • Agency and licensing agreements
  • E-commerce
  • Entertainment and sports
  • Information technology - cloud computing, integrated circuit topography, internet and technological innovation, among others
  • Trade dress
  • Unfair competition

Our IP team is known in the market for its expertise in assisting clients to establish franchises in Brazil, drafting and negotiating franchise, distribution and supply agreements, as well as franchise disclosure documents.

We have considerable experience in intellectual property issues involving plant varieties, biotechnology, life sciences, pharmaceuticals, and projects involving transfer of technology, technical assistance and know-how.

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Daniel Legal & IP Strategy - Intellectual Property Department

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Band 4

第四等

Chambers Commentary (based on the Chambers research)

What the team is known for Experienced team reputed for its strength in trade marks and patents, actively advising on trade mark prosecution, brand protection, contracts and licensing mandates. Client roster includes companies from the electronics, aeronautical, energy and pharmaceutical sectors.

Strengths One impressed client reports: "They are extremely efficient taking action on proposed plans and negotiations, in addition to being assertive and secure in their opinions."

Work highlights Assisted IP Holdings with a lawsuit filed to seek the suspension of the use of the 'Ecko Unltd' trade mark by Starbrands, after the termination of the licensing agreement between both parties.

Notable practitioners

Robert Daniel-Shores is the main contact for clients.

About the Team (content provided by Daniel Legal & IP Strategy)

At Daniel Legal & IP Strategy, we make it our business to understand the clients'. Our highly experienced teams strive not only to highlight areas of opportunity, but also to identify potential risks to our clients' organization and its long-term success. We are proactive in our approach, constantly evolving so that we can anticipate our clients' needs and provide relevant and timely advice on the business issues and decisions they face.
Our commitment to serving our clients' best interests is embedded in everything we do, beginning with our 360o service model which enables us to streamline the end-to-end onboarding and strategic management of IP large portfolios.

We pride ourselves on delivering the highest level of service and attention to protect the assets that give our clients' business its competitive edge. And, because we understand that their world is always evolving, we are evolving too, creating innovative solutions designed with one thing in mind: to better serve clients' needs.

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David Do Nascimento Advogados Associados - Intellectual Property Department

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Band 4

第四等

Chambers Commentary (based on the Chambers research)

What the team is known for Well-established IP practice focused on prosecution and litigation of trade marks and patents. Boasts particular expertise handling anti-counterfeiting mandates on behalf of a client roster comprising relevant players in the retail, cosmetics and pharmaceutical sectors.

Strengths Sources comment: "The team provides very swift responses, in addition to clear advice," and go on to assert: "They were outstanding in a recent case involving the BPTO."

Work highlights Successfully represented adidas in a trade mark cancellation action initiated by Essex with regards to the well-known three stripes trade mark owned by the client.

Notable practitioners

Market commentators are full of praise for partner Marcello do Nascimento, saying: "He is very hard-working, active and visible in the São Paulo market." His practice encompasses patents, trade marks, industrial designs and copyright law. A client adds: "He provides immediate responses at all times."

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Guerra IP - Intellectual Property Department

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Band 4

第四等

Chambers Commentary (based on the Chambers research)

What the team is known for Well-regarded IP boutique that garners praise for its visible activity before the BPTO, representing a significant roster of national and multinational clients in cases related to patent prosecution and opposition. Also regularly assists with the management of patent portfolios.

Strengths Interviewees describe the team as "very responsive, reliable and proficient in English," going on to assert: "Their advice is always detailed, on target and very helpful."

Notable practitioners

Ricardo Pinho enjoys remarkable market recognition, and one source rates him as "a fast and efficient lawyer, who has outstanding knowledge of IP law." He draws upon his long-standing expertise in the practice area to advise on the full range of IP mandates, with one interviewee reporting that "he is visible in patent prosecution."

About the Team (content provided by Guerra IP)

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Müller Mazzonetto - Intellectual Property Department

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Band 4

第四等

Chambers Commentary (based on the Chambers research)

What the team is known for Dynamic boutique covering the full scope of IP services, including litigation, licensing contracts and transactional IP mandates, on behalf of a varied clientele comprising pharmaceutical, health, sports, construction and energy market players.

Strengths One peer endorses the firm, saying: "They are very competent and have taken up the niche of IP arbitration very well. I would definitely hire their services in this sphere."

Notable practitioners

Market commentators report that Karina Haidar Müller is visible undertaking arbitration mandates related to IP issues. Clients also benefit from her skilled advice on cases arising from patents, trade marks and licensing issues.

Nathalia Mazzonetto is hailed by clients, who say: "She draws upon a solid academic background and is very knowledgeable about IP law, focusing in particular on pre-litigation and litigation mandates." She boasts complementary expertise in ADR methods.

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Ouro Preto Advogados - Intellectual Property Department

-

Band 4

第四等

Chambers Commentary (based on the Chambers research)

What the team is known for Compact IP boutique recognised for its skilled assistance with dispute resolution and prosecution mandates involving trade marks, patents and unfair competition issues. Boasts particular acumen in matters arising from the real estate and technology sectors.

Strengths Clients recommend the practice, by stating: "They are fast and very competent in tending to their clients' needs in trade marks and patents matters."

Notable practitioners

One satisfied client endorses name partner Rodrigo de Ouro Preto Santos: "He does an amazing job assisting us with notifications, legal opinions and complaints related to our trade marks." He maintains a skilful practice covering trade mark portfolios, litigation and licensing agreements.

About the Team (content provided by Ouro Preto Advogados)

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Soerensen Garcia Advogados Associados - Intellectual Property Department

-

Band 4

第四等

Chambers Commentary (based on the Chambers research)

What the team is known for Respected IP boutique regularly retained by foreign clients hailing from the pharmaceutical and food sectors to advise on patents, domain names and trade secrets issues. Also active in administrative and judicial disputes regarding the protection of IP rights. Pepsico is a new client win.

Strengths One interviewee describes the team as "dependable, responsible and swift with responses," also adding that "they efficiently propose solutions to problems."

Work highlights Instructed by Allergan to file a lawsuit against Cristália Produtos Químicos e Farmacêuticos due to the unauthorised use of the 'Botox' trade mark held by the company.

Notable practitioners

Founding partner Mario Soerensen Garcia is commended by clients, who value that "he is good performing IP prosecution work." He offers a varied practice to national and international consumer goods, automotive and pharmaceutical companies, spanning trade marks and copyrights mandates, in addition to patent litigation.

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TozziniFreire Advogados - Intellectual Property Department

-

Band 4

第四等

Chambers Commentary (based on the Chambers research)

What the team is known for Full-service firm with an acknowledged IP team, regularly sought out for its expertise in licensing and franchise agreements, copyright issues and IP litigation. Also regularly assists with trade mark and patent prosecution. Cox Automotive and Konami are new clients.

Strengths Commentators enthuse: "I am very well supported by the team and trust them fully, as they are responsive, flexible, experienced and committed."

Work highlights Assisted Nannacay with a wide range of IP-related matters, including trade mark prosecution and drafting its distribution agreements with national and international fashion websites and retailers.

Notable practitioners

Experienced partner Marcela Waksman Ejnisman actively assists clients with licensing agreements and trade mark prosecution. One satisfied source recommends her capabilities: "She is very knowledgeable of all aspects of IP law, practical and focused on finding the best solution for the client."

About the Team (content provided by TozziniFreire Advogados)

Our Intellectual Property practice is responsible for prosecuting and monitoring trademarks, patents and industrial designs with the Brazilian Patent and Trademark Office (INPI). The team is highly prepared to enforce and protect intellectual property rights, by setting up strategies and taking the appropriate measures to protect them. We have wide experience in negotiating, drafting and registering with the INPI, when required, several types of agreements related to intellectual property rights, such as licensing, technology transfer, assignment, technical assistance and franchise contracts; as well as structuring agreements related to biotechnology and research and development, including the employment of the Innovation Law.

We have also expertise in matters related to the Internet, digital technology, cybersecurity and privacy. Our lawyers are highly specialized in negotiating and drafting assignment, licensing, distribution, software development, commercialization and support contracts. We also frequently assist clients in the review of privacy policies, terms and conditions and data breach strategies.

TozziniFreire’s Intellectual Property team has achieved important results for national and international entertainment companies in cases involving television programs, reality television shows, movies and sporting events, thus proving our excellence in issues of copyright and subsidiary rights, image usage rights, and ambush marketing.



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Ariboni, Fabbri e Schmidt Sociedade de Advogados - Intellectual Property Department

-

Band 5

第五等

Chambers Commentary (based on the Chambers research)

What the team is known for Key practice offering a wide variety of services within the practice area, including patents, trade marks, industrial designs and copyright issues. Sources note the department is particularly popular amongst Italian companies.

Notable practitioners

"Very studious and sharp" practitioner Lélio Denicoli Schmidt is recognised for his track record in contentious IP mandates, as a source rates him as "a great litigator." He boasts considerable knowledge of IP law, especially in relation to complex judicial IP litigation matters.

About the Team (content provided by Ariboni, Fabbri e Schmidt Sociedade de Advogados)

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Luiz Leonardos & Advogados - Intellectual Property Department

-

Band 5

第五等

Chambers Commentary (based on the Chambers research)

What the team is known for Significant boutique offering broad experience in patents, trade marks, designs, agreements and litigation. Additionally provides counsel on domain names and unfair competition matters to companies from the food, automotive and technology sectors.

Strengths Clients are impressed by their "vast experience in all trade mark matters and detailed legal advice provided in a timely manner."

Work highlights Represented the Comité Interprofessionnel du Vin de Champagne in a trade mark opposition lawsuit filed before the BPTO in connection with the trade mark 'Morango com Champagne' based on the appellation of origin Champagne.

Notable practitioners

Highly admired founding partner Luiz Leonardos continues to enjoy a respectable position in the IP market due to his long-standing contributions to the field. His expertise stands out in judicial and administrative litigation related to trade marks and patents.

About the Team (content provided by Luiz Leonardos & Advogados)

LUIZ LEONARDOS & ADVOGADOS mixes the expertise and resourcefulness gained in almost 100 years of work devoted to Intellectual Property in Brazil with the advantages of a newly created framework - one that is more effective and personal in the interaction with clients. Created as a direct result of the split of Momsen Leonardos & Advogados on April 30, 2012, Luiz Leonardos & Advogados has 16 partners and over 60 experienced professionals dedicated to all areas related to I.P.

The experience acquired by the Senior Partners with over 50 years of distinguished practice in I.P. enabled the creation of a highly specialized team. The team of attorneys, engineers, biologists and industrial property agents is characterized by its long time of work and gained experience in all fields.

Luiz Leonardos & Advogados provides all the assistance necessary to obtaining, maintaining and protecting intellectual property rights, not only in the administrative sphere, but also before the Brazilian Courts, with the traditional level of services which became a reference in intellectual property in Brazil. 



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Pinheiro Palmer Advogados - Intellectual Property Department

-

Band 5

第五等

Chambers Commentary (based on the Chambers research)

What the team is known for Compact boutique known for its active assistance to US-based companies in connection with patent and trade mark protection and enforcement, as well as copyright law matters and sector-related agreements. Spartan Race is a new client win.

Strengths Sources highlight: "They always provide practical advice and the lawyers are always very clear in communicating their analysis and recommendations."

Work highlights Successfully defended a multinational reinsurance company in a lawsuit brought to nullify two of its trade marks.

Notable practitioners

Clients appreciate that partner Walter Palmer "provides extremely thorough advice, breaks down risks and keeps us informed on the likelihood of success at each stage in great detail," and add that "as an American expat, he speaks perfect English and has a real knack for advising international clients."

Co-head of department Cristina Pinheiro Palmer is described as "an excellent lawyer who I am happy to rely on," by one source who adds: "She is always available and provides swift answers to my questions." She is noted for her expertise in patent prosecution, IP agreements and trade mark enforcement.

About the Team (content provided by Pinheiro Palmer Advogados)

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Remer Villaça & Nogueira Intellectual Property - Intellectual Property Department

-

Band 5

第五等

Chambers Commentary (based on the Chambers research)

What the team is known for Respected practice covering a range of IP matters, including trade marks, agreements and related litigation, on behalf of a varied client roster comprising a number of universities and corporate companies from the retail and pharmaceutical industries.

Strengths Clients emphasise: "Their knowledge of Brazilian patent law is very good and the team demonstrates the ability to identify legal issues and their effect on our business."

Work highlights Instructed by PUCRS to manage its patent portfolio, including the prosecution of all national and international patents.

Notable practitioners

Heads of department Simone Villaça and Ricardo Remer are the key client contacts.

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Siqueira Castro - Advogados - Intellectual Property Department

-

Band 5

第五等

Chambers Commentary (based on the Chambers research)

What the team is known for Full-service firm boasting an IP team focused on anti-piracy strategies and preventative measures against the entry and distribution of counterfeit goods. Additionally provides advice on the full range of IP issues. Globosat is a new client win.

Strengths Clients recommend the firm, stating: "When we needed to seize counterfeit goods, I did not think of another firm. They have great operational and legal expertise in the field."

Work highlights Assisted KRJ with a patent litigation case against Incesa due to the defendant's violation of its IP rights.

Notable practitioners

Co-head of department Márcio Costa de Menezes e Gonçalves is highlighted by clients as "an extremely intelligent, competent, fast and accessible lawyer, who is a reference in the realm of anti-piracy law." He is often hired to deal with anti-piracy strategy and other IP crimes.

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Souto, Correa, Cesa, Lummertz & Amaral Advogados - Intellectual Property Department

-

Band 5

第五等

Chambers Commentary (based on the Chambers research)

What the team is known for Regularly instructed by high net worth individuals and corporate clients hailing from the retail, technology and entertainment sectors. Frequently called upon to advise on trade mark agreements, litigation and enforcement matters.

Work highlights Represented Sephora in a dispute against Sepha Cosmetics regarding the undue use of the term 'Sepha' by the defendant.

Notable practitioners

Recognised partner Leticia Provedel is acknowledged for the strength of her practice related to copyright law in connection with the entertainment, cosmetics and technology sectors. She offers dynamic assistance that also encompasses trade mark prosecution and enforcement and IP litigation.

About the Team (content provided by Souto, Correa, Cesa, Lummertz & Amaral Advogados )

The firm’s IP & Entertainment practice is composed by 12 professionals, among which 4 patent attorneys, and is a market reference for patents, trademarks, franchises, copyrights, domain names, industrial designs, know-how, trade secrets, software and the Internet, unfair competition, e-commerce, business name disputes, trade-dress, biotechnology, and highly regulated areas. The team offers a range of services to international companies of all sizes and advises Brazilian entities in their internationalization processes, even helping them in the implementation of internal innovation and technology policies that stimulate their technological development. In addition, the practice area provides consultancy services on matters related to the music and audiovisual industries, events, online content providers, television broadcasters, advertising agencies, record labels and music publishers, in activities that require multidisciplinary expertise involving copyrights, sponsorship, advertising and branded entertainment. The IP team also assists advertising agencies in projects involving branding and naming, providing full legal advice in negotiations and contracts, including all related tax, labor and corporate aspects.




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Overview

BRAZIL: An Introduction to Intellectual Property Contributed by Philippe Bhering, Bhering Advogados

BRAZIL – INTELLECTUAL PROPERTY

1. International Treaties

Brazil is signatory to major international IP treaties, including (i) the Paris Convention for the Protection of Industrial Property, (ii) the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement), (iii) the Patent Cooperation Treaty (PCT), (iv) the Berne Convention for the Protection of Literary and Artistic Works, (v) the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations, (vi) the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, (vii) the Strasbourg Agreement Concerning the International Patent Classification, (viii) the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, (ix) the UPOV Convention, and (x) the WIPO Convention.

As for trade mark law treaties, Brazil is not yet signatory to the Madrid Protocol. In recent years, there have been positive moves towards accession to the Protocol. The draft Accession Agreement is currently before the Office of the Presidential Chief of Staff (Casa Civil), pending submission to the National Congress.

2. National Laws

In Brazil, the provisions of trade mark, patent, design and unfair competition law are collectively set out in the Brazilian Industrial Property Law (Law No. 9,279 of May 14, 1996, “BIPL”). Of note regarding copyright and software law are the Brazilian Copyright Law (Law No. 9,610 of February 19, 1998, “BCL”) and the Brazilian Software Law (Law No. 9,609 of February 19, 1998, “BSL”), respectively.

In general, Brazilian IP laws apply to nationals of, or persons domiciled in, a country that grants Brazilians or persons domiciled in Brazil equal or equivalent rights under the laws of that country.

The BIPL regulates rights and obligations regarding patents (for inventions and utility models), industrial designs, trade marks, geographical indications, technology transfer agreements and the repression of unfair competition. The BCL, in turn, regulates the rights over literary and artistic works, as well as neighbouring rights. The BSL sets out provisions for the protection of intellectual property rights pertaining to computer programs and their sale in this country.

Responsibility for the registration of trade marks, patents, industrial designs and software, as well as the registration of licensing agreements, lies with the Brazilian Patent and Trade Mark Office, known in Portuguese as the Instituto Nacional da Propriedade Industrial (INPI). The INPI is a government agency under the auspices of the Ministry of Development Industry and Foreign Trade (MDIC). Its main function is the management of the Brazilian system for the concession of intellectual property rights. Works protected under the Copyright Law, depending on their nature, shall be registered with other different public bodies, such as the National Library or the Music School of the Federal University of Rio de Janeiro.

A trade mark registration remains in effect for ten years commencing with the date of its grant, and may be renewed for equal and successive periods. An industrial design registration remains in force for a period of ten years from the date of filing, being extendable for three successive periods of five years each. As for patent registration, an invention patent remains in force for a period of 20 years, and a utility model patent for a period of 15 years from the date of filing (and a minimum of ten years (patents) and seven years (utility models) from the date of grant).

Copyright registration is optional for the purposes of protection. If the work is original in accordance with the terms of the BCL, it will be afforded copyright protection regardless of registration. According to the BCL, the economic rights of the author are protected for 70 years from the first day of January of the year following his/her death. The “moral” rights involved are inalienable and irrevocable, i.e. they cannot be cannot be transferred, licensed or waived.

3. Enforcement of IP Rights

The BIPL provides that infringement of trade mark, design, patent and geographical indication rights and acts of unfair competition constitute both a civil wrong (tort) and a crime. Likewise, copyright and software infringement are both civil wrongs (tort) and crimes. Hence, the injured party is entitled to rely on both civil and criminal measures in order to enforce its rights.

As for the civil proceedings, the injured party may file a lawsuit seeking the cessation of the infringing act, coupled with a claim for damages. The lawsuit may also include a request for an ex parte preliminary injunction with a view to immediate cessation of the harmful conduct, pending a decision on the merits. The plaintiff may also seek the imposition of a daily penalty for failure to abide by the preliminary injunction.

In addition to infringement actions, the BIPL makes provision for the setting aside of trade marks, designs and patent registrations which have been unduly appropriated by third parties. In such a nullity action, the interested party may include in its initial application a request for an immediate stay of the effects of the registration in question, pending a final decision on the substantive issue of whether or not there has been undue appropriation.

Infringement actions must be filed before the state courts, whereas the nullity actions referred to above are heard by federal courts. This is because INPI is automatically a party to all nullity actions, and whenever a government agency is a party to a lawsuit, the action must be filed before the federal courts.

Criminal remedies prescribed by the BIPL, the BSL and the Criminal Code include imprisonment or the imposition of a fine on the infringer. In terms of criminal proceedings, one very important provision is the possibility of filing a preliminary criminal search and seizure action, aimed at gathering evidence of acts of infringement and avoiding the destruction or hiding of evidence by the infringer.

Border control mechanisms also feature as part of the Brazilian system of enforcement of IP rights. Federal Decree No. 6759 of February 5, 2009 includes authorisation for the customs authority to seize any products it considers to bear altered or imitated marks.

Of note in this context is the increase in recent years in the number of surveillance and enforcement operations conducted by customs and federal police agents. Customs authorities have also been implementing anti-counterfeit training sessions and workshops for customs agents. These measures have led to a significant increase in the effectiveness of the operations conducted.

4. Updates

Simplified procedure for the granting of patent applications

The Brazilian PTO, together with the Brazilian Ministry of Industry, Foreign Trade and Services (MIFTS), opened a public consultation on July 31, 2017, regarding a new proposal for a simplified procedure for the granting of patent applications. The objective of this new proposed procedure, according to the BPTO, is to guarantee transparency to the process, as well as align the measures to fight the backlog in the examination of patents with the demands from society. The proposal prescribes that patents whose new applications or requests to enter the national phase were filed up until the date of the publication of the new proposal will be granted within 90 days, as long as they fulfil certain requirements and had not received reasoned subsidies from third parties. Patent applications involving pharmaceutical products and processes are excluded from this simplified procedure. The interested parties had until August 21, 2017, to send their suggestions and, after such date, the proposals will be analysed by the BPTO and the MIFTS.

New Guidelines for the Examination of Patent Applications relating to chemical inventions

On 2 January 2018, the BPTO published the Resolution No. 208/2017, adopting the New Guidelines for the Examination of Patent Applications relating to chemical inventions. The new guidelines represent a consolidation of BPTO’s practice on the chemical and pharma fields, notably in connection with how a compound shall be claimed; determination of specific rules on how applications comprising second medical use claims in vivo tests must be disclosed in the specification for compliance with enablement requirement; and definition on how polymorph applications must be drafted in order to be sufficiently described.

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Senior Statesperson

Luiz Leonardos & Advogados

From the Chambers Latin America guide

Highly admired founding partner Luiz Leonardos continues to enjoy a respectable position in the IP market due to his long-standing contributions to the field. His expertise stands out in judicial and administrative litigation related to trade marks and patents.

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Senior Statesperson

Peter Dirk Siemsen

Dannemann Siemsen

From the Chambers Latin America guide

Senior statesman Peter Dirk Siemsen is widely respected for his established track record advising leading corporate clients on the full range of IP law matters, including patents, trade marks, copyright and agreements.

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Eminent Practitioner

Luiz Henrique do Amaral

Dannemann Siemsen

From the Chambers Latin America guide

Eminent practitioner and head of department Luiz Henrique do Amaral is recognised by market sources as "one of the most important lawyers in the firm." He is renowned as an expert in franchising matters and routinely advises both national and international companies on IP-related cases. 

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Band 1

José Roberto Gusmão

Gusmão & Labrunie

From the Chambers Latin America guide

Distinguished co-head of department José Roberto Gusmão is vastly respected in the IP practice area for his long-standing experience representing leading multinational companies in unfair competition disputes and cross-border patent litigation. He draws upon his former experience as the president of the BPTO to offer skilled advice on a myriad of IP mandates, including trade marks, domain names and copyrights.

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Band 1

Elisabeth Kasznar Fekete

Kasznar Leonardos Intellectual Property

From the Chambers Latin America guide

Acclaimed founding partner Elisabeth Kasznar Fekete draws upon her long-standing experience in this practice area to provide advice on strategic IP litigation and consultancy mandates. Particularly well-equipped to undertake cases related to trade marks, unfair competition, copyright law and trade secrets, as well as assisting with the establishment of anti-counterfeiting programmes. Market sources also admire her work as an academic.

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Band 1

Gabriel Francisco Leonardos

Kasznar Leonardos Intellectual Property

From the Chambers Latin America guide

Revered name partner Gabriel Francisco Leonardos heads the Rio de Janeiro office and maintains a highly respected practice in the market due to his extensive experience in IP litigation and consultancy, with particular acumen in cases related to licensing agreements, software rights, patents, trade marks and copyright law. Clients also benefit from his skilled advice on trade mark prosecution and IP arbitration.

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Band 2

Demarest Advogados

From the Chambers Latin America guide

Noteworthy head of department Tatiana Campello impresses commentators with her "broad experience in the practice area and ability to have technical discussions with the engineers about specific agreements, revealing a vast knowledge of the technologies discussed." Market sources also praise her for being "a brilliant thinker, very practical and a wonderful leader."

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Band 2

Antonella Carminatti

BMA – Barbosa, Müssnich, Aragão

From the Chambers Latin America guide

Recognised co-head of department Antonella Carminatti is regularly hired due to her skilled capabilities in IP litigation, with particular acumen in cases related to patents, trade marks and copyrights. She is also well equipped to deal with anti-counterfeiting programmes and IP aspects in connection with transactions, including M&A deals and related due diligence.

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Band 2

Gustavo de Freitas Morais

Dannemann Siemsen

From the Chambers Latin America guide

Well-regarded partner Gustavo de Freitas Morais is referenced by clients as "a very knowledgeable, business-oriented, swift and available lawyer," and the source adds that "he keeps up to date with the life sciences market and legislation." Market observers also praise him, by saying: "He is an excellent litigator and strategist."

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Band 2

Valdir de Oliveira Rocha Filho

Veirano Advogados

From the Chambers Latin America guide

Seasoned partner Valdir de Oliveira Rocha Filho is held in high esteem by market sources, with one peer claiming: "I respect him greatly for the long-standing career he built." He offers a broad expertise in IP law, including prosecution and litigation cases involving trade marks, industrial designs, patents and copyrights. One interviewee reports that "he is visible performing trade mark registrations."

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Band 2

Gusmão & Labrunie

From the Chambers Latin America guide

Highly respected partner Jacques Labrunie is acknowledged by market commentators as "an excellent lawyer who maintains a high level of activity in this practice area." He is noted for his expertise handling patent and trade mark infringements and also boasts particular prowess in relation to unfair competition, geographic indications and copyright issues.

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Band 2

Licks Attorneys

From the Chambers Latin America guide

"Great litigator"Otto Licks enjoys outstanding feedback from clients, who value his "availability at all times and ability to go all out and provide innovative solutions," adding that "these are the reasons why we instruct him with our most complex cases." Licks has vast experience representing clients on strategic cases in connection with international patents. 

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Band 2

Luiz Edgard Montaury Pimenta

Montaury Pimenta, Machado & Vieira de Mello

From the Chambers Latin America guide

Much-admired named partner Luiz Edgard Montaury Pimenta maintains a respected IP practice due to his significant track record advising clients on trade mark, copyright and software issues. He additionally offers considerable acumen in IP issues related to advertisement, internet, marketing and contracts.

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Band 3

Silveiro Advogados

From the Chambers Latin America guide

Interviewees recommend head of department Rodrigo Azevedo of Silveiro Advogados, saying: "He is very knowledgeable of IP law, with particular expertise in contentious mandates related to internet issues." Another source also states: "We obtained successful results in recent judicial proceedings related to the software licensing due to his expertise."

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Band 3

Bhering Advogados

From the Chambers Latin America guide

Significant founding partner Pedro Bhering is highlighted by one client as "a lawyer who is very easy to work and communicate with," while another market source attests that "he is very intelligent." He is often instructed by multinational corporations to assist with trade marks, licensing, technology transfer and copyright matters.

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Band 3

Rodrigo de Ouro Preto Santos

Ouro Preto Advogados

From the Chambers Latin America guide

One satisfied client endorses name partner Rodrigo de Ouro Preto Santos: "He does an amazing job assisting us with notifications, legal opinions and complaints related to our trade marks." He maintains a skilful practice covering trade mark portfolios, litigation and licensing agreements.

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Band 3

Lélio Denicoli Schmidt

Ariboni, Fabbri e Schmidt Sociedade de Advogados

From the Chambers Latin America guide

"Very studious and sharp" practitionerLélio Denicoli Schmidt is recognised for his track record in contentious IP mandates, as a source rates him as "a great litigator." He boasts considerable knowledge of IP law, especially in relation to complex judicial IP litigation matters.

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Band 3

Di Blasi, Parente & Associados

From the Chambers Latin America guide

Known name partner Gabriel Di Blasi enjoys a recognised position in the market, as sources laud him as "a very competent lawyer, engineer and author, who maintains great levels of activity." He regularly assists clients with patent prosecution, in addition to licensing, franchising and ANVISA-related regulatory matters.

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Band 3

Eduardo Magalhães Machado

Montaury Pimenta, Machado & Vieira de Mello

From the Chambers Latin America guide

Experienced partner Eduardo Magalhães Machado is acclaimed by sources as "a very good lawyer." He boasts a notable track record in the IP market and specialises in contracts, software and copyright law. Another market commentator claims: "He is very visible undertaking negotiations on behalf of clients."

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Band 3

Murta Goyanes Advogados

From the Chambers Latin America guide

Antonio Murta is described by one source as "a lawyer who is very aware of the general IP legal landscape," while another client adds: "He is a good litigator, who is easy to work with, very responsive and knowledgeable." His portfolio spans advice on trade marks and unfair competition, in addition to IP litigation.

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Band 3

Guerra IP

From the Chambers Latin America guide

Ricardo Pinho enjoys remarkable market recognition, and one source rates him as "a fast and efficient lawyer, who has outstanding knowledge of IP law." He draws upon his long-standing expertise in the practice area to advise on the full range of IP mandates, with one interviewee reporting that "he is visible in patent prosecution."

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Band 3

BMA – Barbosa, Müssnich, Aragão

From the Chambers Latin America guide

Key partner Claudia Schulz"differentiates herself from other lawyers because of her focus and attitude, excellent service and expertise dealing with companies from the US and the UK," one source comments. She regularly assists with IP protection strategies, franchising and agreements matters, in addition to trade mark disputes.

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Band 3

Mario Soerensen Garcia

Soerensen Garcia Advogados Associados

From the Chambers Latin America guide

Founding partner Mario Soerensen Garcia is commended by clients, who value that "he is good performing IP prosecution work." He offers a varied practice to national and international consumer goods, automotive and pharmaceutical companies, spanning trade marks and copyrights mandates, in addition to patent litigation.

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Band 3

SPLAW – SPIEWAK, CARNEIRO, BARBOSA, CARVALHO, MAIA ADVOGADOS

From the Chambers Latin America guide

Benny Spiewak of SPLAW- Spiewak, Carneiro, Barbosa, Carvalho e Maia Advogados garners praise from market sources, who describe him as "a good, dynamic, hard-working and super-focused lawyer." He is particularly well-equipped to advise on transactional mandates and offer strategic consultancy in IP matters, particularly in relation to regulated industries and the R&D matters.

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Band 3

José Carlos Vaz e Dias

Vaz e Dias Advogados & Associados

From the Chambers Latin America guide

Founding partner José Carlos Vaz e Dias of Vaz e Dias Advogados & Associados is described by sources as "a clear and swift communicator, who has an excellent commercial view and provides practical advice." He often collaborates with international law firms in the prosecution of trade marks and technology transfer agreements.

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Band 3

André Zonaro Giacchetta

Pinheiro Neto Advogados

From the Chambers Latin America guide

Established partner André Zonaro Giacchetta is held in high esteem by clients, who describe him as "a great and very calm lawyer," and attest: "He always brings different opinions to cases and is also very good evaluating risks and opportunities." He regularly provides counsel on IP disputes, copyright law and technology transfer agreements.

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Band 4

Fábio Luiz Barboza Pereira

Veirano Advogados

From the Chambers Latin America guide

Significant co-head of department Fábio Luiz Barboza Pereira is often instructed by clients hailing from the media, entertainment and information technology sectors to advise on transactional IP matters, with particular acumen in copyrights and franchising.

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Band 4

Bhering Advogados

From the Chambers Latin America guide

"Very active and sharp" partner Philippe Bhering is praised by one source due to his "exceptional soft skills, hands-on approach and clear advice," whileanother client recommends his "business-oriented perspective dealing with disputes." He is particularly popular amongst German companies.

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Band 4

Rodrigo Borges Carneiro

Dannemann Siemsen

From the Chambers Latin America guide

Partner and academic Rodrigo Borges Carneiro maintains an experienced IP practice and regularly assists clients from the media and entertainment sector with matters related to trade marks, copyrights, geographical indications and technology transfer agreements.

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Band 4

Márcio Costa de Menezes e Gonçalves

Siqueira Castro - Advogados

From the Chambers Latin America guide

Co-head of department Márcio Costa de Menezes e Gonçalves is highlighted by clients as "an extremely intelligent, competent, fast and accessible lawyer, who is a reference in the realm of anti-piracy law." He is often hired to deal with anti-piracy strategy and other IP crimes.

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Band 4

Andreia de Andrade Gomes

AGFF Law

From the Chambers Latin America guide

Founding partner Andreia de Andrade Gomes of AGFF Law is regarded by clients as "a very competent and accessible lawyer." She boasts significant knowledge in relation to licensing agreements involving the life sciences, technology and fashion industries.

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Band 4

Marcello do Nascimento

David Do Nascimento Advogados Associados

From the Chambers Latin America guide

Market commentators are full of praise for partner Marcello do Nascimento, saying: "He is very hard-working, active and visible in the São Paulo market." His practice encompasses patents, trade marks, industrial designs and copyright law. A client adds: "He provides immediate responses at all times."

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Band 4

Dannemann Siemsen

From the Chambers Latin America guide

Market sources endorse partner Attilio Gorini and point out that "he has significant activity in copyright mandates." He is particularly noted for his expertise in the media and entertainment industry, as well as copyright and trade mark issues.

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Band 4

Joaquim Eugênio Goulart

Dannemann Siemsen

From the Chambers Latin America guide

"Very good litigator" Joaquim Eugênio Goulart is recognised by market sources for his visible assistance to clients in connection with contentious issues arising from the practice area. He also boasts acumen in trade mark and software protection matters.

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Band 4

Karina Haidar Müller

Müller Mazzonetto

From the Chambers Latin America guide

Market commentators report that Karina Haidar Müller is visible undertaking arbitration mandates related to IP issues. Clients also benefit from her skilled advice on cases arising from patents, trade marks and licensing issues.

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Band 4

Karin Klempp Franco

Barcellos Tucunduva Advogados

From the Chambers Latin America guide

Karin Klempp Franco of Barcellos Tucunduva Advogados receives remarkable feedback from a client, who enthuses: "She is a perfectionist with the highest-quality standards in every aspect," also adding that her "knowledge in IP and technology transfer matters is outstanding."

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Band 4

José Mauro Machado

Pinheiro Neto Advogados

From the Chambers Latin America guide

Solid partner José Mauro Machado is endorsed by market sources as "a very good litigator who delivers high-quality work." He often advises clients hailing from the social media and technology sectors on trade marks, patents and copyright matters.

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Band 4

Luis Fernando Matos Jr

Matos & Associados - Advogados

From the Chambers Latin America guide

Respected named partner Luis Fernando Matos Jr of Matos & Associados - Advogados garners praise from market observers for maintaining a significant client roster. He is often retained to advise on the full range of IP mandates, including patents, trade marks and copyrights.

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Band 4

Nathalia Mazzonetto

Müller Mazzonetto

From the Chambers Latin America guide

Nathalia Mazzonetto is hailed by clients, who say: "She draws upon a solid academic background and is very knowledgeable about IP law, focusing in particular on pre-litigation and litigation mandates." She boasts complementary expertise in ADR methods.

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Band 4

Pinheiro Palmer Advogados

From the Chambers Latin America guide

Clients appreciate that partner Walter Palmer"provides extremely thorough advice, breaks down risks and keeps us informed on the likelihood of success at each stage in great detail," and add that "as an American expat, he speaks perfect English and has a real knack for advising international clients."

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Band 4

Cristina Pinheiro Palmer

Pinheiro Palmer Advogados

From the Chambers Latin America guide

Co-head of department Cristina Pinheiro Palmer is described as "an excellent lawyer who I am happy to rely on," by one source who adds: "She is always available and provides swift answers to my questions." She is noted for her expertise in patent prosecution, IP agreements and trade mark enforcement.

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Band 4

Souto, Correa, Cesa, Lummertz & Amaral Advogados

From the Chambers Latin America guide

Recognised partner Leticia Provedel is acknowledged for the strength of her practice related to copyright law in connection with the entertainment, cosmetics and technology sectors. She offers dynamic assistance that also encompasses trade mark prosecution and enforcement and IP litigation.

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Band 4

Flavia Rebello Pereira

Trench Rossi Watanabe (in cooperation with Baker McKenzie International)

From the Chambers Latin America guide

Interviewees are impressed by partner Flavia Rebello Pereira and assert: "She has in-depth legal knowledge, answers queries promptly and proposes excellent solutions to critical issues." She actively assists with IP protection, trade mark prosecution and technology transfer agreements.

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Band 4

Flávia Maria Vasconcelos Pereira

Trench Rossi Watanabe (in cooperation with Baker McKenzie International)

From the Chambers Latin America guide

Market commentators endorse partner Flávia Maria Vasconcelos Pereira as "a good practitioner working with trade mark and patent issues." She is frequently instructed by clients hailing from the pharmaceutical and luxury goods sectors to manage IP portfolios.

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Band 4

João Vieira da Cunha

Gusmão & Labrunie

From the Chambers Latin America guide

"Very good lawyer"João Vieira da Cunha is often retained by a myriad of corporate clients to provide counsel on unfair competition and advertisement disputes, in addition to trade mark infringement cases. Clients also report that "he is an efficient team leader."

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Band 4

Marcela Waksman Ejnisman

TozziniFreire Advogados

From the Chambers Latin America guide

Experienced partner Marcela Waksman Ejnisman actively assists clients with licensing agreements and trade mark prosecution. One satisfied source recommends her capabilities: "She is very knowledgeable of all aspects of IP law, practical and focused on finding the best solution for the client."

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Up and Coming

Paula Mena Barreto Pinheiro

Campos Mello Advogados

From the Chambers Latin America guide

Up-and-coming partner Paula Mena Barreto Pinheiro of Campos Mello Advogados enters the rankings due to remarkable client feedback, with one client highlighting: "She provides business-oriented and practical legal advice that helps clients make well-rounded decisions."

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Up and Coming

Diogo Dias Teixeira

Dias Teixeira Sociedade de Advogados

From the Chambers Latin America guide

Up-and-coming partner Diogo Dias Teixeira of Dias Teixeira Sociedade de Advogados is endorsed by clients as a dynamic practitioner: "He is our go-to lawyer for licensing agreements, trade marks and more complex IP due diligence."

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Up and Coming

Márcio Junqueira Leite

Pinheiro Neto Advogados

From the Chambers Latin America guide

Up-and-coming partner Márcio Junqueira Leite garners praise from clients: "He is a great and available lawyer, who has a very technical approach." He specialises in IP litigation connected to the tech and media sectors.

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Up and Coming

Rafael Lacaz Amaral

Kasznar Leonardos Intellectual Property

From the Chambers Latin America guide

Clients appreciate up-and-coming partner Rafael Lacaz Amaral's assistance: "In a recent litigation case, he demonstrated great knowledge of the matter," and add: "He is very proactive and offers efficient response times."

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Up and Coming

José Eduardo Pieri

BMA – Barbosa, Müssnich, Aragão

From the Chambers Latin America guide

Up-and-coming partner José Eduardo Pieri is recognised by multiple sources as "a very good lawyer," due to his experience with trade marks and transactional IP issues. Clients add that "he offers a straightforward service."

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Associates to watch

Luiz Felipe di Sessa

Cescon, Barrieu, Flesch & Barreto Advogados

From the Chambers Latin America guide

Associate-to-watch Luiz Felipe di Sessa of Cescon, Barrieu, Flesch & Barreto Advogados is appreciated by clients due to his "knowledge of thepharmaceutical market and its regulations." He regularly assists with patent prosecution.

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