Intellectual property in Brazil
Dannemann Siemsen Advogados
Specialist firm Dannemann Siemsen Advogados is widely regarded as one of the leading firms for IP matters in Brazil, covering patent, trade mark and industrial design matters. It complements the work with ancillary expertise in areas such as regulatory and consumer law. Mauricio Teixeira Desiderio has a strong niche in the protection of plant varieties, Peter Siemsen is a sports law expert and Luiz Amaral is recommended for franchising and unfair competition matters. Gustavo de Freitas Morais, Marina Inês Fuzita Karakanian and Joaquim Eugenio Goulart are also held in high regard.
Gusmão & Labrunie
One of the most renowned IP boutiques in Brazil, Gusmão & Labrunie has a 'committed' team that provides ‘a good balance between quality of work and response time’. Next to prosecution, dispute resolution work stands out and the team recently represented offshore drilling contractor Transocean in patent litigation against Queiroz Galvão Óleo e Gás. Another highlight was the successful defense of Unilever against a trade dress infringement dispute started by Coca-Cola. Founding partners José Gusmão and Jacques Labrunie are leading lawyers in the field. Joao Cunha heads the IP litigation team and Laetitia d’Hanens is in charge of the consulting and trade mark practice. Data protection and privacy head Vanessa Ribeiro made partner in January 2019.
Kasznar Leonardos Intellectual Property had a busy year in 2018 advising on matters relating to biosimilars and handling a software copyright infringement case, among other highlights. The group includes specialists in the areas of patents, domain names, data privacy, IP licensing and marketing law. Regulatory affairs head Anderson Ribeiro is an up-and-comer of note. Claudio Roberto Barbosa, Gabriel Francisco Leonardos, Elisabeth Kasznar Fekete and Nancy Satiko Caigawa are recommended for IP litigation. Rosane Tavares joined from Guerra IP in July 2018.
Bhering Advogados' team provides 'timely advice', has a 'superior approach to customer service' and 'knows what European clients wish to achieve in South America'. Based in Rio de Janeiro, the firm has branch offices in São Paulo and Curitiba, from where it acts for both local and international clients with a focus on the US and Germany. It represented mass-retail group Groupe Casino in trademark and unfair competition litigation, and handled toy manufacturer Mattel's Brazil-wide counterfeiting programme. Philippe Bhering is 'detail oriented', 'very skilled, responsive and helpful', and provides ‘sound commercial advice’. Pedro Bhering and Isabel Milman are also recommended.
At BMA - Barbosa, Müssnich, Aragão, advice is 'on the spot'. The full-service firm has a strong position in the boutique-heavy Brazilian IP environment, advising both national companies (such as Natique in litigation concerning the Saliníssima brand) and international companies such as L'Oréal; on behalf of the latter, the group obtained a preliminary injunction against the sale of products that infringed the client's trade marks. Antonella Carminatti is 'always in the loop' and Claudia Schulz is another name to note. José Eduardo Pieri and Pedro Frankovsky Barroso made partners in June 2018.
Assistance at Daniel Law, which celebrates its 60th anniversary in 2019, is 'attentive', 'proactive' and 'honest'. The team handles patent and trademark prosecution, litigation, enforcement and anti-counterfeiting, as well as transactional work, with particular strength in the technology and life sciences sectors. A highlight was assisting clothing company Reserva with a brand counterfeiting programme. In 2018, it also handled a significant number of trade mark filings. On the personnel level, the year saw three partner promotions, seven lateral partner hires and two partner-level departures. Ricardo Nunes, André Ferreira de Oliveira and Robert Daniel-Shores are recommended.
Montaury Pimenta, Machado & Vieira de Mello
Rio de Janeiro-based Montaury Pimenta, Machado & Vieira de Mello regularly acts on matters relating to trade marks, industrial designs, technology transfer, advertising, franchising and regulatory law. The group succeeded in gaining the registration of geographical indication for Mexico's Tequila Regulatory Council (CRT), and represented beer company Kaiser in a brand-related dispute. Luiz Edgard Montaury Pimenta, Eduardo Magalhães Machado and Gabriela Salerno are stand-out practitioners.
Trench Rossi Watanabe handles the full range of IP work, including portfolio management, technology transfer and licensing transactions as well as contentious cases. The impressive client portfolio includes numerous multinationals. For example, the group handles franchise work for Radisson; advised Unilever and Sony on trade mark matters; and defended Hasbro in a patent infringement complaint filed by Kidsword concerning alleged utility model and design infringements. Marcela Trigo de Souza, Flavia Vasconcelos and Flavia Rebello are recommended practitioners.
Veirano Advogados has a broad take on IP matters, covering copyright, domain names, patents and advertising, as well as IT and media and entertainment law matters. The group frequently oversees its clients' entire trade mark portfolios in Brazil; for example, it is retained by chemicals and biotechnology company Lonza Group, for which the team handle matters including trade mark infringement and unfair competition litigation. Valdir de Oliveira Rocha Filho and Fábio Pereira are the key partners.
David do Nascimento Advogados Associados S/C
Clients of IP boutique David do Nascimento Advogados Associados S/C value that the team 'takes into consideration possible future consequences'. The team recently represented Walt Disney in copyrights and trademark infringement cases. Another highlight was assisting Adidas with the search and seizure of faked goods. Ricardo do Nascimento is recommended along with Marcello do Nascimento, who has 'great expertise and knowledge'.
When providing IP advice, the team at full-service firm Demarest Advogados 'always looks for out-of-the-box solutions'. Pirelli relied on the team for the drafting and registration of technology licensing agreements. On the trade mark side, it acts for clients such as video game developer King.com, while banknote-sensor joint venture CI Tech Sensors is a client for patent advice. 'Incredible lawyer' Tatiana Campello has a 'great ability and serenity to negotiate' and 'makes things happen by turning thoughts into action'. Marcelo Inglez de Souza is 'very committed' and Camila Garcindo Dayrell Garrote is an up-and-coming senior associate.
Porto Alegre-based specialist firm Guerra IP stands out for its patent expertise, which includes the management of portfolios as well as prosecution. In 2018, the group also undertook a large number of trade mark filings. In addition, Ricardo Pinho is recommended for technology transfer agreements, Cristina Guerra has experience with geographical indications and Alberto Guerra handles sports law matters. Rosane Tavares left for Kasznar Leonardos Intellectual Property in July 2018.
Murta Goyanes Advogados
Murta Goyanes Advogados 'always strives to provide commercial advice at a reasonable cost'. It handles patent prosecution, domain name registration and copyright matters, and has recently expanded its trade mark prosecution offering. Antonio Murta Filho and Luiza Duarte Pereira are 'commercially minded' and recommended along with Marcelo Goyanes and Luis Henrique Porangaba.
Full-service heavyweight Pinheiro Neto Advogados' IP team focuses on strategic litigation. A recent successful case was the defense of Multisport Indústria Comércio e Representações against a trade mark nullity action brought by Speedo International. Non-contentious work included assisting Nubank with the structuring of its IP portfolio. André Zonaro Giacchetta and José Mauro Decoussau Machado head the team.
Eduardo Ribeiro Augusto and Márcio Costa de Menezes e Gonçalves lead Siqueira Castro – Advogados' 'reliable and professional' IP team, which handles mostly IP prosecution and litigation. Examples are the monitoring of illegal importation of counterfeit products on behalf of Globosat, and representing Peixe Urbano in trade mark litigation.
Soerensen Garcia Advogados Associados
Mario Soerensen Garcia is the face of IP boutique Soerensen Garcia Advogados Associados. It serves national and international clients, and complements its IP practice with ancillary expertise with competition, regulatory and commercial law matters. The Rio de Janeiro-based firm has a branch office in São Paulo.
Fialho Salles Advogados
KLA Advogados has a team of 'strategic thinkers'. While mostly handling transactions, the group has been expanding its litigation work; cases included defending Wieden+Kennedy against a case brought by the copyright owner of a musical composition allegedly used in an advertisement created by the agency. Recent client wins include Editora Melhoramentos, Banco Renner and GOL. Tania Liberman is 'always available' and provides a 'quick service'. Associate Vanessa Pirró also stands out.
Luiz Leonardos & Advogados
Luiz Leonardos & Advogados 'always provides solid advice' on patents, trade marks, anti-counterfeiting, plant varieties, and food and drug law. Founding partner Luiz Leonardos, Gustavo Starling Leonardos and Ana Paula Jardim are recommended. According to clients, Daniele Dias Carneiro Machado is 'swift and productive' and Patricia Lusoli provides 'reliable advice in a timely manner'.
Silveiro Advogados is particularly strong in IP litigation and crisis management. A highlight was defending Cecrisa Revestimentos Cerâmicos in patent litigation, while other work included trade mark, industrial design and unfair competition cases as well as domain name disputes. Rodrigo Azevedo is the name to note.
Souto Correa Cesa Lummertz & Amaral Advogados offers 'excellent and timely service at a fair price' on the full range of IP matters including franchising, domain names, trade secrets and business name disputes. The team succeeded in gaining the rejection of a preliminary injunction request filed by Uber against its client, 99 Tecnologia, concerning a comparative advertising campaign. Another highlight was representing Sephora in an infringement action against the undue granting and use of SEPHA as a trade mark. Leticia Provedel stands in high regard with peers and clients alike.
As a full-service firm, TozziniFreire Advogados regularly negotiates licensing agreements and conducts due diligences as well as handling the prosecution and registration of intellectual property rights. The group, under the lead of Marcela Waksman Ejnisman, manages Longping High-Tech's trade mark portfolio and is responsible for the prosecution of Pokémon's and McCain's trade mark portfolios. Andreia de Andrade Gomes left to found IP boutique firm Andrade Gomes & Ferreira Filho.