HOW CAN I PROCEED IN AN IMITATITION AND COPY OF TRADEMARK IN BRAZIL?

 
First of all keep quiet, is a secret case that you should communicate only to your lawyer or agent of industrial property in Brazil. Then he counsels to do an extrajudicial notification to stop the imitation and copy in about 15 to 30 days, and write if not stop that there´s the forfeit to file a judicial lawsuit requesting indemnification plus abstention of mark use with the forfeit of fine per day (astreintes).  But before this action you can enter with a search and apprehension lawsuit in secreting to get proof for other action of indemnification. .There´re many kinds of  lawsuits in Brazil, this is one alternative, it depends on case.  

 On the other hand is good to explain what is the difference between imitation and reproduction. For brazilians imitation is a partial copy and reproduction is a total copy. For instance, if you have a trademark LST and other person has the mark LSI in the same class of products , here we have an imitation case, because the trademark without the letter T is a little bit different of mark LST. While if you have the trademark LST and other has the LST too in the same activity, now we face a reproduction case. In Brazil is easier to win a lawsuit with a reproduction than an imitation.

The extrajudicial notification mentioned in the first paragraph has the objective to warn and prevent rights, serving to guarantee the future proof that somebody didn´t stop to use an imitated or reproduced trademark. This process should have a notice to receive with the mail, obligating the counterfeiter sign the received  lawsuit.        

After the extrajudicial notification if the part doesn´t stop the use of trademark, then is time to go in with a search and apprehension judicial in secreting. This action is for taking documents as brochures, debit notes, advertising and publicity of any kind using the trademark with reproduction or imitation. Carrying the process with very good proof you will have conditions to initiate the main action in the right time. But pay attention, in Brazil you have 30 days after the accomplishment of search and apprehension to enter with the main action of indemnification including abstention of mark use with the forfeit of fine per day (astreintes), according the brazilian legislation. The astreintes or fine per day originated from French jurisprudence and is applicable in the Brazil. By the way others actions as notification and exhibition of documents you don´t have the obligation of 30 days after the accomplishment to enter with the main action.

By César Alexandre Leão Barcellos

       Lawyer and Licensed Patent and Trademark Attorney

       www.trademarks.com.br

       e-mail: cesar@trademarks.com.br