The Fourth Panel of Brazil’s Superior Court of Justice (STJ) held that proof of patent infringement allows non-material damage to be presumed (in re ipsa), without requiring evidence of actual harm to a company’s image, reputation or standing. According to the panel, the protection afforded to patents, as a form of industrial property, follows the same reasoning already adopted in the court’s case law concerning unauthorized use of trademarks.
Applying this interpretation, the panel reinstated an award of compensation for non-material damage against companies that had manufactured and sold, without the patent holder’s authorization, a copy of a grain trailer protected by a utility model patent. The patent had been granted by the Brazilian National Institute of Industrial Property (INPI) to protect improvements in the use or manufacture of existing objects.
“The distinction between trademarks and patents does not preclude the presumption of non-material damage, as both are forms of industrial property protected by the same legislation (Article 2 of the Industrial Property Law). Infringement, in itself, undermines reputation, credibility and market standing, warranting compensation for non-material damage,” stated the judge reporting the case, Luís Carlos Gambogi, a state appellate judge temporarily serving on the STJ.
The case arose from an action brought by the agricultural machinery manufacturer seeking to prohibit unauthorized use of the patented technology and recover damages. Based on an expert report, the lower courts found that the utility model patent had been infringed and prohibited the manufacture and sale of the product for the duration of the patent’s term. However, the Goiás State Court of Justice (TJGO) set aside the award for non-material damage, holding that compensation required proof of harm to the claimant’s reputation, which had not been established.
At the STJ, the trial court’s judgment was reinstated by a single-judge decision, prompting the company responsible for manufacturing the copy to file an internal appeal. In its appeal, the company argued that the case concerned patent infringement rather than trademark infringement and that non-material damage therefore could not be presumed. It also maintained that there was no evidence of harm to the claimant’s image, reputation or renown.
In his opinion, Luís Carlos Gambogi recalled that the STJ recognizes presumed non-material damage in cases of unauthorized trademark use where counterfeiting has been established, without requiring proof of actual harm. According to the judge, unlike a trademark—whose function is directly connected to a company’s credibility and image—a patent primarily serves to secure its holder’s exclusive right to use and commercially exploit an invention.
Despite this difference, he explained, both are forms of industrial property protected by Law No. 9,279/1996, which governs the subject in Brazil. The reporting judge therefore considered that the same reasoning should apply to both situations.
In Gambogi’s view, it would be unreasonable to adopt an interpretation recognizing non-material damage in re ipsa for trademarks but not for patents, since both are governed by the same law. “It is a well-established principle that where the same rationale exists, the same rule of law applies,” he observed.
In this case, Gambogi noted that the evidence established infringement by the companies. As the court found, one company manufactured the copy of the grain trailer, while the other, responsible for distribution, displayed, stocked and sold the product despite knowing its unlawful origin.
“Therefore, proof of patent infringement is likewise sufficient to presume non-material damage, making it unnecessary to demonstrate specifically that the unlawful conduct extended beyond financial interests and harmed the company’s image, reputation and standing, since the unauthorized use itself constitutes a compensable act,” concluded the judge, dismissing the internal appeal.
Read the judgment in AREsp No. 1,567,533.
This news item concerns the following proceeding: AREsp No. 1,567,533.