TRADEMARKS FILING AND PROSECUTION IN BRAZIL
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to help consumers indentify that its products or services with which the trademark appears originate from a unique source, and to help distinguish its products or services from those of other entities.
Trademark in Brazil may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark.[1]
| Relevant office | National Institute of Industrial Property Ministry of Economy (INPI) |
| Nice classification | Yes (11th edition) |
| Paris convention | Yes |
| Madrid system | Yes |
| Multi class system | No |
| Documents required for filing a trademark application | Signed Power of Attorney, affidavit |
| Prosecution process | Filing publication of the mark in the trade mark journal opposition(within 60 days from the publication date) registration renewal |
| Registration term | 10 years from the registration date |
| Renewal term | 10 years |
Trademark searches in Brazil
It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Brazil can be conducted for word marks, device marks, numeral and labels. An official search can be conducted at the records of the National Institute of Industrial Property Ministry of Commerce. Moreover, it is recommended by the INPI to carry out the search in the database and check whether the mark you are intending to register is not present in the database. The search can be based on keywords, application number, and name of the applicant. There is option available on the official website “how to carry out trademark searches” and the website also list out trademarks which are having highly renowned status in effect in Brazil.[2]
Trademark word search edition of Brazil follows the Nice Classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45.
It is advisable to conduct comprehensive trademark clearance search in Singapore to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Brazil. It is advisable to conduct a comprehensive search for a figuration trademark. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks. A device mark search in Brazil can be conducted amongst the marks filed and registered as per the Vienna code classification.
Filling trademark applications in Brazil
A person may file single class trademark application in Brazil.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Brazil:
Ordinary trademark applications filed in Brazil are applications without claiming any priority. Ordinary trademark applications are required to be filed online by the National Institute of Industrial Property Ministry of Commerce. The official website of the registry provides with an option of Access the e-marcas module and fill out the online application form. The trademark manual is provided for the ready reference. Multi class trademark applications cannot be filed in Brazil. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.[3]
Priority trademark applications in Brazil/Convention trademark applications Brazil:
A priority trademark application may be filed in Brazil. A priority trademark application should be filed in Brazil within 6 months after the date on which the application was made in the convention country.[4]