The Fourth Panel of the Superior Court of Justice (STJ, Brazil’s highest appellate court for non-constitutional federal matters) decided that proof of patent infringement allows for the recognition of presumed moral damages, also known in legal terms as in re ipsa damages. In practice, this means that the patent owner does not need to demonstrate concrete harm to its image, reputation, or market standing to be entitled to financial compensation.
The context of the dispute
The case leading to the decision (AREsp 1.567.533) involved the unauthorized manufacture and sale of a copy of a grain cart, an agricultural machine. The original equipment was protected by a utility model patent. This type of patent is granted by the National Institute of Industrial Property (INPI, Brazil’s patent and trademark office) to protect improvements in the practical use or manufacturing of existing objects.
Following an expert report, the lower courts recognized the infringement (counterfeiting) and prohibited the manufacture and marketing of the copied product. However, the Court of Justice of Goiás (TJGO) had dismissed the claim for moral damages. The state appellate court held that compensation required concrete proof of injury to the plaintiff company’s honor and reputation, which had not been demonstrated in the case record.
The legal alignment between trademarks and patents
The dispute reached the STJ, where the company responsible for the copy argued that the infringement involved a patent, not a trademark. The defense asserted that trademarks are directly tied to corporate credibility and goodwill, whereas the primary purpose of a patent is to guarantee exclusivity of use and economic exploitation of an invention. For this reason, the infringing company argued that moral damages could not be presumed.
The reporting judge for the case, Designated Appellate Judge Luís Carlos Gambogi, acknowledged the different functions of the two legal instruments. However, he emphasized that both trademarks and patents are forms of industrial property and are governed by the same statutory framework in Brazil, the Industrial Property Law (Law No. 9,279/1996).
For the judge, it would not be reasonable to adopt an interpretation that recognizes presumed moral damages for trademark infringement but not for patent infringement, as both derive from Article 2 of the same statute. The reporting judge applied the legal principle that “where the same reason exists, the same law applies.”
Security for industrial property
The decision of the Fourth Panel of the STJ concluded that counterfeiting inherently compromises the reputation, credibility, and prestige of the innovative company in the market. In the adjudicated case, evidence showed that one company manufactured the copy while another distributed, stored, and sold the product despite knowing of its unlawful origin.
This understanding reinforces protection for patent holders in Brazil. By establishing that mere proof of unauthorized use constitutes an actionable wrong subject to indemnification, the court eliminates the requirement to demonstrate that the unlawful conduct extended beyond immediate financial loss, providing greater legal certainty for innovation and business development in the country.
This content is for informational purposes only and does not constitute legal advice. For guidance on specific matters, consult a qualified lawyer.
