Two companies in the same industry find out at the same time that a factory abroad is copying their products. The first has a shipment of counterfeits detained at the port, before customs clearance. The second watches the goods enter the country and reach street vendors and online marketplaces, and only then manages to pull them out of circulation. Why?
Both face the same type of intellectual property violation. The difference lies in what each company registered and recorded with the authorities, which is to say in the protective steps they did, or did not, take years earlier.
The law protects the registration, not the product
Brazil’s Industrial Property Law (Law No. 9,279/1996) follows the attributive system: a company that files an application for a trademark, patent or industrial design only acquires exclusivity once the title is officially granted, whether a trademark registration (Article 129), an industrial design registration (Article 109) or a letter patent (Articles 38 and 42). This is worth underlining for companies used to jurisdictions where rights arise from use: in Brazil, before the grant, there is only an expectation of right. (That expectation does carry weight, and in the case of patents that take years to be granted it may secure retroactive compensation.)
In practical terms, the law does not protect “the product” or “the company”, but the registered asset, in the exact scope in which it was registered. A trademark registration covers a specific sign for certain classes of goods and services. It does not automatically cover the shape of the packaging, the design of the object or the graphic pattern of the label, unless those elements have also been protected by titles of their own, among the different types of intellectual property available.
For that reason, when counterfeiting appears, it is essential to map out every title and protection the company holds before asserting that the copy is unlawful. And to hold them, the right steps must be taken in advance.
Protecting more than the word mark
INPI, the Brazilian Patent and Trademark Office, recognises five forms of trademark presentation: word marks (the name alone, without styling), device marks (an image, symbol or logo), composite marks (name and graphic element combined), three-dimensional marks (the distinctive shape of the product or its packaging, separate from any technical effect) and position marks, the latter regulated by INPI Ordinance No. 37/2021, which protect the application of a sign in a singular and specific position on a support.
It is not unusual for counterfeiters, rather than copying a brand name exactly as it is, to replicate the product’s visual appearance and alter small details of the name. This is why the composition of the registration portfolio can be the decisive factor in determining which tools are available to react.
- A company holding only a word mark registration protects the name, but tends to see disputes over logo, label and packaging shift to the ground of unfair competition, which requires evidence of confusion and of customer diversion in each individual case.
- A composite or device mark registration covers the visual identity as filed, which defines what a logo registration actually protects.
- A three-dimensional registration is the right instrument when the packaging or the shape of the product is distinctive in itself.
- A position mark protects elements applied at a specific location, such as a stitch, an eyelet or a side stripe, common in fashion and footwear.
Why registering the industrial design matters
The ornamental form of a product, that is, its appearance, is protected as an industrial design (Articles 94 through 121 of the Industrial Property Law), valid for 10 years from the filing date and renewable for three successive five-year periods, up to a limit of 25 years (Article 108).
INPI’s figures, however, reveal a gap. In 2024, Brazilian applicants filed 426,453 trademark applications and only 5,787 industrial design applications. Part of the explanation lies in timing. An industrial design must be new, and the law grants a grace period of only 180 days between disclosure and filing (Article 96, paragraph 3). A company that launches a product and decides to register the design a year later has, as a rule, already missed the window. Industrial design protection therefore has to be decided on the launch schedule, not on the litigation schedule.
Without that registration, a copy that changes the logo but keeps the shape of the product is no longer an infringement of a registered right and has to be argued as a matter of trade dress and unfair competition, normally a longer route.
Borders and enrolment with the SCP
The Brazilian Customs Regulation (Decree No. 6,759/2009) sets out, in Articles 605 through 608, the procedure for border measures, modelled on the TRIPS Agreement. It is one of the most effective measures against counterfeiting, because it acts before the product reaches the consumer, and also the one that depends most on advance preparation: once notified of the detention, the rights holder has only 10 business days to take the appropriate court action. Otherwise, the goods may be released and continue on their way.
To make this cooperation possible, the Receita Federal, Brazil’s federal tax and customs authority, maintains the Anti-Piracy System (Sistema de Combate à Pirataria, SCP), which deserves to be far better known. Holders of trademarks registered with INPI, as well as of geographical indications, may enrol free of charge and provide customs with contact details and with the material that allows the genuine product to be told apart from the counterfeit. Without that enrolment, an officer who suspects a shipment has greater difficulty identifying whom to contact.
In December 2025, Interpretative Declaratory Act RFB No. 3/2025 reinforced this route by standardising the Receita Federal’s approach and allowing it to act on its own initiative where counterfeiting involves risks to health, safety or consumers. The act creates no new obligations for rights holders, but it does add value to those who already cooperate by supplying technical information.
Monitoring and evidence
No protective measure survives without evidence, and obtaining evidence requires constant monitoring. Following the Industrial Property Gazette (Revista da Propriedade Industrial, RPI), marketplaces and social media, and recording incidents as soon as they are found, should be part of any intellectual property management strategy. Since counterfeit goods are very often channelled through digital commerce platforms, making a test purchase is in some cases advisable to strengthen the complaint.
Once the evidence is in hand, what can be done with it depends on what was registered, as noted at the outset.
The range of measures and what each one requires
- Customs: detaining the goods before they enter the market. Requires registration with INPI and can be facilitated by prior enrolment with the SCP.
- Out-of-court: notifying the infringer and requesting the removal of listings. Requires a granted registration, since platforms ask for the registration number, and constant monitoring.
- Civil: compelling the infringer to stop, seizing the goods and claiming compensation (Articles 209 and 210 of the Industrial Property Law).
- Criminal: counterfeiting a registered trademark is a criminal offence, but proceedings depend on the initiative of the rights holder, who has a limited period to act from the moment the person responsible is identified.
Why proper legal guidance matters
Building an intellectual property portfolio deserves to be treated as a strategic decision, assessed before launch and reviewed as the company grows and enters new markets. When counterfeiting appears, whatever has been registered is already registered, and whatever was left out can rarely be corrected in time. To avoid ending up in the position of the second company in our opening example, proper legal guidance is essential, particularly for foreign companies whose products reach Brazil through importers, licensees or distributors.
Ricci Intellectual Property has been building and defending portfolios of trademarks, industrial designs and patents for more than 35 years. To assess the gaps in your portfolio and define the right strategy for the Brazilian market, get in touch with our team.
