Decree nº 6.759, of February 5, 2009 regulates the management of customs activities as well as inspection, control and taxation of foreign trade operations in Brazil.
Specific provisions establishes that it may be retained by the customs authority, in the course of customs inspection, ex officio or at the request of a third party concerned, products carrying falsified, altered or imitated trademarks, or that represents false indication of origin.
After the retaining, the customs authority shall notify the owner of trademark rights to, within 10 (ten) working days of awareness, promote, if appropriate, the corresponding complaint and request the judicial seizure of goods. This deadline can be renewed once.
The contact is made through a formal notification, on which the Customs inform the attorney of record, among other data: the volume/number of the seized products; the type of the seized products, the term which the trademark owner must take judicial measures, etc.
If, after the deadline, the customs authorities have not been informed that suitable measures were taken by the proprietor for the judicial confiscation of goods, customs clearance of these goods may be continued, provided it fulfills the other conditions for importation or exportation.
The mentioned decree also established the possibility that a third party request the seizure based on previous knowledge of the incoming of suspicious cargo in Brazil.
What occurs in practice is that, when the trademark owner is notified (through its attorney for record at the Brazilian Trademark Office), there is the possibility to schedule an interview with the customs authorities to analyze / photograph the goods in loco, aiming to file an affidavit informing the customs that the seized goods are either authentic or fake.
The measures above are not a guarantee that the goods will remain seized, since Brazilian Law expressly provides that the trademark owner may take judicial measures in order to retain the goods.
As far as the judicial measures are concerned, they are basically in two fronts:
- Obtain the name of the infringer - customs authorities are not legally required to provide/reveal the name of the importer. The only manner to ascertain the importer’s name and address in Brazil is by filing a Writ of Mandamus against the Chief of the Custom Section.
- After the name of the importer is of knowledge, file a Court Actions against it.
There is also the possibility of sending warning letters before filing such a lawsuit, as that to try to solve the matter out of court.
Unfortunately, Brazil does not have a specific registration of a mark at the Customs’ database. Nevertheless, there are some pro-active measures to be taken to assist the customs authorities and try to avoid the entrance of fake goods in Brazil. The recommendation is to provide the Customs with all information available, including but not limited:
- The mark and the name of its owner in Brazil;
- A list comprising the names of the owner of the mark’s licensees (if any) and distributors (if any), including their current addresses;
- A copy of the license/distribution agreement (if disclosure is allowed); and
- Dates of future shipments to Brazil of original goods, their origin and the port of entrance in Brazil (bearing in mind that Brazil has innumerous ports / airports).
The Customs are not legally required to seize cargo based on the above measures. However, past experience reveals that such measures have been effective when it comes to suspicious cargos.
Finally, it is important to always maintain updated the attorney of record of a trademark in the Brazilian Trademark Office’s database. The several attempts to try to find out the attorney of the owner of a certain trademark cause an obvious delay on the proceedings.