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]
Paris convention
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Brazil within six months of after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Brazil follows the nice classification of classes. National institute of industrial property ministry of commerce Brazil uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defines list of terms and cover all the goods and services.
In order to complement the original nice classification lists, INPI created the Auxiliary lists.
In case you don’t find any goods and services you intend to protect in your trademark in the list of goods and services or you have any questions regarding the same you can consult it with the services classification commission (CCPS).[5]
Trademark examination and opposition in Brazil
After the submission of the application, it goes through the preliminary formal examination and if all the documents are properly submitted and it has met all the legal requirements of the registration, it shall be recorded and date of application will be the date of submission.
Once the application is recorded, it is accepted and published for the observation by the third parties. Any interested party within 60 days may file the objections. The applicant will be notified regarding the objection and he can present his arguments within 60 days.
Once the objection period is elapsed, or it is filed, once the term of the submission of arguments, the examination process shall be carried out and during this process additional requirements may be requested, which is required to be answered within 60 days.
Upon failure to respond with the requirements the application will be deemed to be dismissed.
The examination will continue if the requirements have been answered, even if the requirements have not been met or the request has been challenged.
On the completion of the examination, a decision is given regarding the acceptance or denial of the registration of application.[6]
Trademark registration in Brazil
The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is registered for a period of 10 years from date of registration and the registration certificate is issued.
[1] https://ssrana.in/global-ip/international-trademark-filing-registration/trademarks-in-united-states/
[2] https://www.gov.br/inpi/en/services/trademarks/basic-guide/basic-guide
[3] https://www.gov.br/inpi/en/services/trademarks/basic-guide/basic-guide
[4] https://www.wipo.int/treaties/en/ip/paris/summary_paris.html
[5] https://www.gov.br/inpi/en/services/trademarks/classification-trademarks/classification
[6] https://www.gov.br/inpi/pt-br/servicos/marcas/arquivos/protocolo-de-madri/lpi-trad-pms-rev-pms.pdf