by Nathalia Ferreira Ribeiro da Silva
April 24, 2017
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The new Brazilian Civil Procedural Code (NCPC) adopted a system of court precedents inspired in common law and adapted to civil law.
The new statute codified some well-settled constitutional principles, like isonomy, legal certainty and effectiveness, creating several mechanisms that oblige judges and appellate courts to follow binding precedent. In this way, the code aims to rationalize jurisdictional activity and avoid the so called “legal lottery”.
On the other hand, the systematic adopted by the new procedural code does not obstruct case law development. There are some techniques imported from common law (i.e. overruling, overriding and distinguishing) that have been expressly introduced in the Brazilian system.
In the intellectual property area – whose discussions are highly technical, complex, and often involve significant amounts –, this systematic is interesting because the inconsistency of court rulings always generates a sensation of legal uncertainty.
Twenty years after the enactment of the IP Act, the only official binding precedent created by the Superior Court of Justice – highest Brazilian court for infra-constitutional matters – involves the statute of limitation for bringing a civil lawsuit claiming damages for trademark infringement.
Recently, the same court granted certiorari to decide the first case according to the “Repetitive Appeals” system. In the Special Appeal number 1.527.232/SP, the Court will rule if it is possible for a state court to compel the defendant to cease the use of a mark registered by the Brazilian Patent and Trademark Office (BPTO), as well as to enjoin the defendant from using unregistered trade dress in unfair competition cases.
Under Brazilian law, however, it seems clear that the state court just has jurisdiction over trademark infringement cases when the defendant has no registration granted by the BPTO. Moreover, the state courts usually have jurisdiction over trade dress infringement cases, as far as the trade dress is not the subject matter of a trademark registration.
Several other discussions remain to be settled. For instance, in IP infringement cases claiming damages, is it necessary for the IP owner to prove actual damages along the course of the lawsuit, or the right to be indemnified arises directly from the infringement? Most of the case law adopts the latter view, but it is still common to see some trial courts applying the former understanding.
Similarly, which court has territorial jurisdiction to handle and decide infringement cases involving the collection of damages? The court of the venue where the defendant is domiciled? The court of the venue where the plaintiff is domiciled? Or the court of the place where infringement has occurred? The Brazilian Procedural law establishes no rigid rule in this respect and provides some interesting alternatives on where to bring a case. It is imperative, therefore, to make a proper decision on where to litigate because some courts are very well acquainted with IP issues and adopt a more IP owner bias.
Without any doubt, the systematic of the new procedural statute creates an incentive for Brazilian case law to become more consistent, thereby honoring the principles of isonomy and reasonable length of the lawsuit, which are fundamental in the intellectual property area.
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