Updates in Geographical Indications’ Protection and Anti-Counterfeiting Measures in Brazil

On 28 August 2024, the Brazilian Patent and Trademark Office (“BPTO”) hosted the pre-launch of the country’s first National Directory for Suppressing the Counterfeiting of Geographical Indications (“GIs”). This initiative, a part of the BPTO’s Anti-Counterfeiting Program and integrated into Brazil’s National Plan to Combat Piracy (2022-2025), marks a significant advance in the repression of counterfeiting, bolstering the protection of high-quality products and services in the Brazilian market. It is important to note that BPTO has already launched a program in 2022 to reduce the term for analyzing GI requests and increase the number of GIs recognized in the country, so the new Directory represents an essential step in strengthening Brazil’s GIs protection framework.

The new Directory is a joint project of the Brazilian Council for Repressing Counterfeit and Intellectual Property Crimes (CNCP) and the BPTO, and is already available for registration of producers and service providers (click here)[1]. The Directory will serve as a center for strategic information accessible exclusively to public agents involved in combating counterfeiting, authorized by the Brazilian Ministry of Justice and Public Security through Resolution No. 01 of December 2, 2013 (click here), such as Customs Authorities, Judicial Police, and the Brazilian Public Ministry.

This is an important measure to fight cases of geographical indications counterfeits, especially if we consider the broad cultural, environmental and traditional richness that exists in Brazil, and which attracts a wide range of investors and players from the most varied market sectors. By consolidating data and best practices of anti-counterfeiting, the main objective of the Directory is to enhance the effectiveness of geographical indications protection measures. This strategic center not only supports the integrity of regional products but also reinforces consumer confidence in certified products and services commercialized in the Brazilian market, thereby promoting fair competition and sustainable economic growth for the country.

GIs are important industrial property rights, especially in a multi-diverse country like Brazil, which produces multiple (and already awarded in international fora) regional products like vines, spirits, coffees, cheeses, leathers etc. Designed to protect the value of products and services that have exclusive characteristics linked to a specific region, GIs represent an official recognition that a certain product or service carries unique qualities due to its origin, whether due to natural conditions, production techniques or cultural tradition, location. By associating a product with its place of origin, GIs not only differentiate that product in the market but also increase its value, promoting regional development and strengthening the reputation of its exclusive characteristics.

In Brazil, the recognition of GIs is carried out by BPTO based on the regulations provided by the Industrial Property Law (Law nº 9,279/1996) and by BPTOs Ordinance nº 04/2022, the latter establishing the conditions and technicalities for the granting certification to certain products or services as GIs.

Currently, the BPTO recognizes two types of GIs: (a) Indication of Source, which is generally attributed to the territory that has become known as a center for manufacturing, production or extraction of a certain product or provision of a specific service) and (b) Designation of Origin, which is generally attributed to the territory whose geographic name designates a certain product or service that presents qualities arising exclusively or essentially from the geographic environment. As of today, the BPTO has recognized a total of 100 GIs, with 18 new designations granted in 2023 (+22,7% when compared with 2022).

The attribution must be requested by interested parties, who must be (a) the producer (or service provider) itself, (b) the foreign applicant of a GI already recognized abroad or, even, (c) the collective representative entity of the community that requires the GI registration. The GI Application must be completed by the applicant through the BPTO digital platform (“Sistema e-IG”), which will generate an electronic form for analysis by the BPTO. Given the low popularity of GI in Brazil, however, many products and services were never submitted for analysis.

The graphic or visual representation of a recognized GI may be solely used by producers or service providers established in the territory recognized by the BPTO, so that the beneficiaries of the GI are assured legal mechanisms to seek the preservation of the exclusivity of the GI and the quality of the products or services identified by it based on the registration certificate issued by BPTO, such as cease and desist letters or filing specific lawsuits to suppress counterfeiting cases.

One of the key benefits of GIs in Brazil is the extension of the effects of its protection to the graphic or figurative representation used to claim protection. Even though it is not technically classified as a trademark, the graphic representation of a geographical indication may be used by the BPTO as a legal basis for denying registration for trademarks that are graphically or phonetically similar to the graphic or visual representation of a GI (as per article 124, IX of the Brazilian Industrial Property Law).

The BPTO’s recent efforts, such as the 2022 program to reduce the delay in processing GIs applications and the creation of a dedicated Directory to fight GIs counterfeit in 2024, are a significant step in strengthening Brazil’s GIs protection system. They reflect Brazil’s strategy of leaving behind the purely commodity-based export model traditionally adopted in the country to become a leading producer of differentiated and high-quality products and services. By popularizing and strengthening the GIs system, Brazil is enhancing its presence in the international market, reinforcing the country’s strong reputation as a source of natural and cultural wealth and adding value to its local (and, very often, quite tasty) products.

[1] In addition to the new Directory, producers and service providers are also able to register their trademarks and geographical indications in the Anti-Piracy System officially launched by the Federal Revenue of Brazil in April 2024 (click here), as long as they are validly registered at the BPTO.