E-commerce platforms have become the primary battleground for intellectual property enforcement, and their BPPs, while designed to protect rights holders, have created an environment in which the mere possession of a registration certificate, regardless of its substantive merit, can be leveraged to disrupt legitimate commerce. This article brings strategies to redress the problem.
The exponential growth of e-commerce platforms over the past decade has fundamentally reshaped how goods reach consumers. The rise of cross-border marketplaces, which allow consumers to buy products from international sellers with unprecedented ease, has further propelled this transformation. This enlargement has created cross-border commercial opportunities, but has also brought a host of new challenges. Among those several challenges, perhaps the most pressing on is the protection of intellectual property rights in a borderless digital environment.
The sheer volume of listings, the speed at which products can be advertised and sold, and the difficulty of identifying the origin of goods have made traditional enforcement mechanisms look sluggish and inadequate. In response to mounting pressure from rights holders, major e-commerce platforms have developed their own internal Brand Protection Programs (BPPs), designed to allow IP owners to report and request the removal of listings that allegedly infringe trademarks, copyrights, industrial designs, or patents.
These BPPs, however well-intentioned, face significant structural limitations. The sheer volume of complaints filed on a daily basis makes it practically impossible for human reviewers to conduct anything resembling a substantive infringement analysis on each case. Platforms have responded by adopting remarkably simplistic decision-making criteria. In many instances, the mere submission of a trademark registration, an industrial design certificate, or a patent grant is sufficient to trigger the suspension or removal of a competitor’s listing (often without any meaningful examination of whether the reported product actually infringes the asserted right). In other cases, platforms effectively delegate the decision to the complainant, treating the takedown request as presumptively valid unless the accused seller mounts a timely and well-documented defense. The result is a system in which the burden of proof is inverted, and the threshold for triggering enforcement is dangerously low.
A growing and troubling consequence of this framework is the increasing number of companies that register industrial designs for products they commercialize in Brazil, many times, products over which they may hold no exclusivity whatsoever, for the primary purpose of weaponizing those registrations against competitors in BPP proceedings.
These entities obtain a Brazilian industrial design certificate not because they are the original creators or legitimate assignees of the design, but because the Brazilian registration system, as will be discussed, does not scrutinize the merits of the application at the time of filing. With a certificate in hand, they file complaints with e-commerce platforms to have competing listings suspended or removed, often targeting sellers who are, in fact, the legitimate distributors or even the original rights holders.
The consequences of this practice are far-reaching and genuinely perverse. A parallel importer who only resells foreign products in Brazil can successfully take down the listing of an authorized national distributor. More alarmingly, such an importer can even target the original designer or manufacturer, provided that the original rights holder has not secured a Brazilian industrial design registration. In a system where possession of a certificate is treated as near-conclusive evidence of ownership, the absence of a domestic registration creates a vacuum that opportunistic actors are quick to exploit.
This dynamic is made possible by the structural features of Brazil’s industrial design registration system. Under the Brazilian Industrial Property Law (Law No. 9,279/96), industrial designs are protected through registration rather than substantive patent-like examination.
When an application is filed with the Brazilian Patent and Trademark Office (BPTO), it is subjected only to a formal examination, which only verifies if the application meets procedural requirements such as proper documentation, drawings, and applicant information. The BPTO does not, at this stage, assess whether the design is novel or original. The registration is granted essentially as filed. Substantive examination, which is a genuine assessment of novelty and originality against the prior art, is available only as an optional procedure and must be specifically requested by the rights holder or by a party demonstrating sufficient interest.
In practice, this means that a certificate can be issued for a design that lacks every substantive requirement for protection, and that certificate will nonetheless carry the presumption of validity until challenged.
Within the judicial arena, this structural gap has opened a pathway for affected parties to obtain preliminary injunctions reversing measures imposed through BPP takedowns. Courts have shown increasing willingness to recognize that a Brazilian industrial design registration, issued without substantive examination, should not be treated as definitive proof of infringement, particularly when the party against whom the complaint was directed can demonstrate that it holds the original design rights or maintains a legitimate distribution relationship with the original manufacturer.
In such cases, judges have granted injunctive relief ordering platforms to reinstate suspended listings, grounded in the reasoning that the absence of a merits-based examination at the BPTO undermines the probative value of the certificate when used as a weapon in BPP proceedings.
For these reasons, it is strongly recommended that any product commercialized in Brazil, regardless of whether it was originally designed abroad, becomes the subject of an industrial design registration filed with the BPTO. The rationale is both defensive and offensive. Defensively, holding a Brazilian registration enables a company to respond to BPP complaints filed by competitors with a domestic title of equal or superior standing, thereby neutralizing takedown requests before they result in prolonged suspension of listings. Offensively, a Brazilian registration positions the rights holder to proactively enforce its design rights against infringers in the Brazilian market.
Equally important is that domestic registration provides the documentary foundation to support distribution agreements with key commercial partners, assuring them that the products they distribute are supported by enforceable IP rights in the jurisdiction in which they operate.
The requirements for registering an industrial design in Brazil are, in principle, straightforward.
The design must be novel and original, meaning that it must not be identical or substantially similar to any design already available to the public before the filing or priority date. Crucially, the Industrial Property Law provides a 180-day grace period, during which disclosure of the design by the inventor or rights holder (or by third parties who obtained the information directly or indirectly from the inventor) does not destroy novelty.
This means that the registration should be submitted, preferably, within 180 days of the product’s public launch or market introduction. If the filing occurs within this window, the design’s own commercial existence will not become prior art against the application and the novelty requirement will remain intact.
It is worth noting, however, that even if the 180-day grace period has elapsed, registration remains possible. Because the BPTO conducts only a formal examination and does not automatically assess novelty or originality, an application filed after the grace period will still be processed and, assuming formal compliance, the registration will be granted. The critical distinction lies in the robustness of that registration.
A design registered after the 180-day window is inherently more vulnerable to nullity actions initiated by third parties, who may demonstrate that the design was publicly available before the filing date and therefore lacks novelty. In practical terms, this vulnerability cuts both ways. On one hand, it means that a competitor who registered the same design in bad faith after the grace period also holds a fragile. This provides a degree of protection against bad-faith actors. On the other hand, a registration obtained after the 180-day window is a weaker instrument if the rights holder’s objective is to prevent third parties from commercializing products that may genuinely infringe the original design, because the registration’s susceptibility to nullity undermines its enforceability and its persuasive value in BPP proceedings.
All of these factors combined give an unequivocal picture of the risks and strategic imperatives for any company commercializing products in Brazil.
The best way to protect against exposure arising from abusive use of industrial design registrations in BPP Programs is to register within the 180-day grace period after the public launch of a product, maximizing the legal robustness of the title and minimizing the risk of nullity. Even registrations made after this time, while more fragile, are a vital defensive weapon, enabling companies to react to BPP complaints with a domestic title and, if necessary, pursue judicial relief against abusive takedowns.
In a market where the absence of a Brazilian registration can mean the loss of distribution channels, the suspension of commercial activity, and the erosion of competitive position, the decision to register industrial designs domestically should be viewed not as an optional administrative step, but as a core element of any company’s intellectual property and commercial strategy in Brazil.
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Authors: Mariana de Araújo M. Lima Di Pietro, Thaís de Kássia R. Almeida Penteado, and Cesar Peduti Filho, Peduti Advogados
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“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”
