1 Relevant Authorities and Legislation
1.1 What is the relevant trade mark authority in your jurisdiction?
The Brazilian Patent and Trademark Office ("BPTO"), also referred to as the National Institute for Industrial Property (Instituto Nacional da Propriedade Industrial – "INPI", in Portuguese).
1.2 What is the relevant trade mark legislation in your jurisdiction?
- Decree No. 1,263 of October 10, 1994 – Ratifying of the Paris Convention for the Protection of Industrial Property as last revised at Stockholm;
- Decree No. 1,355 of December 30, 1994 – Ratifying of the TRIPS Agreement; and
- Law No. 9,279 of May 14, 1996 - The Brazilian Industrial Property Act.
2 Application for a Trade Mark
2.1 What can be registered as a trade mark?
All visually perceptible distinctive signs, when not prohibited by law, are eligible for registration as a trade mark, pursuant to Section 122 of the Brazilian IP Act.
As such, word, figurative, composite and 3D forms are registrable; however, "non-traditional" marks, such as musical jingles or colours, are not allowed in Brazil.
In any event, to reach registration a trade mark must fulfil the basic requirements of relative novelty, veracity and distinctiveness.
2.2 What cannot be registered as a trade mark?
The following are statutorily barred from registration under the Brazilian IP Act:
i. crests, armorial bearings, medals, flags, emblems, distinctions and monuments, as well as their respective names, representations or imitations, when they are of an official or public character, whether they are national, foreign or international;
ii. an isolated letter, numeral and date, unless displayed in a sufficiently distinctive form;
iii. an expression, representation, drawing or any other sign that is contrary to [accepted principles of] morality and good conduct or is offensive to a person's honour or image, or is an affront to the freedom of conscience, belief, religious cult or ideas and feelings worthy of respect and veneration;
iv. the designation or acronym of a public entity or agency, unless registration is applied for by the public entity or agency itself;
v. the reproduction or imitation of the characteristic or distinguishing element of a third party's title of establishment or company name, liable to cause confusion or association with such distinctive signs;
vi. generic, necessary, common, usual or simply descriptive signs, when they are related to the products or services they identify, or those commonly used to indicate a characteristic of the products or services regarding their nature, nationality, weight, value, quality and time of production or rendering of a service, unless displayed in a sufficiently distinctive form;
vii. signs or expressions used merely as a means of advertising;
viii. colours and their names, unless displayed or combined in a unique and distinctive manner;
ix. a geographical indication and its imitation liable to cause confusion, or a sign that may falsely lead to a geographical indication;
x. a sign that leads to a false indication as to origin, source, nature, quality or utility of the products or services for which the mark is intended;
xi. the reproduction or imitation of an official hallmark regularly used to guarantee a standard of any kind or sort;
xii. the reproduction or imitation of a sign that has been registered as a collective or certification mark by a third party, with due regard to the provision of Article 154;
xiii. the name, award or symbol of an official or officially recognised sporting, artistic, cultural, social, political, economic or technical event, as well as an imitation liable to create confusion, except by authorisation of the competent authority or entity promoting the event;
xiv. the reproduction or imitation of a title, policy, coin and paper currency of the Union, the States, the Federal District, the Territories, the Municipalities or of any country;
xv. the legal name or corresponding signature, family name or patronymic and the image of third parties, except by consent of the owner, his heirs or successors in title;
xvi. well-known pseudonyms or nicknames and individual or collective artistic names, except by consent of the owners, their heirs or successors in title;
xvii. literary, artistic or scientific works, as well as titles that are protected by copyright and are liable to cause confusion or association, except by consent of the author or owner;
xviii. technical terms used in industry, science and art that are related to the products or services they identify;
xix. the reproduction or imitation, either wholly or in part, even with additions, of another person's registered trademark to distinguish or certify identical, similar or related products or services, liable to cause confusion or association with the other person's mark;
xx. the duality of trademarks in the name of a single owner for the same products or services unless, in the case of marks of the same nature, they are displayed in a sufficiently distinctive form;
xxi. the necessary, common or usual form of a product or packaging, or also a form that cannot be dissociated from a technical effect;
xxii. an object that is protected by registration as an industrial design in the name of a third party; and
xxiii. a sign that imitates or reproduces, either wholly or in part, a trademark which the applicant clearly could not be unaware of as a result of his activity, in the name of a person established or domiciled in Brazilian territory or in a country that is bound to Brazil by agreement, or that assures reciprocity of treatment, if the mark is intended to identify identical, similar or related products or services liable to cause confusion or association with the other person's mark.
2.3 What information is needed to register a trade mark?
In addition to the basic filing requirements, such as the trade mark and goods and services claimed, the applicant must provide the following information:
- priority number and date, if applicable;
- declaration confirming the products or services applied for are related to an activity the applicant is effectively and lawfully engaged with;
- power of attorney; and
- colour claim, if applicable.
Both the priority document and the power of attorney may be filed later (four months and 60 days, respectively) as long as a supplemental deadline is requested when the application is filed.
2.4 What is the general procedure for trade mark registration?
Once the application is filed, the BPTO will assign a serial number and perform a formality check, which consists of confirming all the relevant information has been correctly provided by the applicant on the filing form (adequate representation of the trade mark, priority number, attorney of record, declaration of activity and other documents that may have been submitted).
If the application meets the minimum filing requirements, it will be published for opposition purposes in three to four weeks from filing. Interested third parties will then have 60 days to raise objections and file oppositions (no extensions of time are allowed). If an opposition is filed, a notice will be published and the applicant will have an unextendable 60-day term to submit a response.
The examination of the application (including reviews on both absolute and relative grounds) will only be carried out by the BPTO after the deadlines relating to opposition proceedings expire.
Roughly, three years from filing of the application, the BPTO will publish its decision on the registrability of the trade mark, either allowing or rejecting registration. If an application is allowed, the applicant will have a 60-day term to pay the final issuance fees, whereas, if rejected, the same deadline will be triggered for the filing of an appeal.
When granted after payment of the issuance fees, the registration will be published in the Official Bulletin and the corresponding Certificate will be provided electronically by the BPTO within approximately two months.
It is not necessary to inform intent-to-use at any time.
2.5 How can a trade mark be adequately graphically represented?
There are no rules for representing word trade marks, which must simply be typed in the application filing form.
For adequate graphical representation of composite and device trade marks, the applicant is required to inform the applicable classes from the International Classification of Figurative Elements of a Mark.
Regarding 3D trade marks, the applicant is required to present an attachment with the posterior, anterior, top, bottom, sides and perspective views.
For applications claiming the protection of colours schemes, an internationally recognised colour code is not required and the applicant must simply present prints (samples) of the trade mark in colour.
2.6 How are goods and services described?
The goods and services can be described according to the general description of the Nice Classification, or with a more specific description, depending on the applicant's interest.
Given intent-to-use is not required, it is permissible to claim whole class headings. However, the goods and services claimed must be related to the activity in which the applicant is effectively and lawfully engaged.
2.7 What territories (including dependents, colonies, etc.) are or can be covered by a trade mark in your jurisdiction?
Rights over a trade mark are acquired by means of a registration and will have effect only within the Brazilian territory.
2.8 Who can own a trade mark in your jurisdiction?
Natural persons and legal (juristic) persons under public or private law, such as corporations, partnerships, joint ventures, unions, associations, and any other entity capable of being represented in a court of law.
For collective or certification marks, the application can only be filed by a legal person who, respectively, represents the collectivity or has no direct commercial or industrial interest in the certified products.
2.9 Can a trade mark acquire distinctive character through use?
The BPTO is unwilling to allow the registration of trade marks that are not inherently distinctive based on the understanding that, having adopted the attributive system for the acquisition of rights, the circumstances and facts predating the filing of the application are not, in principle, taken into account.
In other words, it is the BPTO's view that its role is limited to analysing (i) the intrinsic distinctiveness of a trade mark, and (ii) the distinctiveness by comparison to other registered trade marks.
Despite the above, secondary meaning is widely accepted by Brazilian courts, which have not only build considerable case law confirming the possibility of distinctive character of a trade mark being acquired through use, but have also expressively recognised the applicability of Section 6 quinquies of the Paris Convention.
In any event, involvement of the Brazilian courts is only permissible after a decision is handed down by the BPTO, and therefore, once the trade mark application is rejected for lack of distinctive character, a court action must be filed seeking the annulment and subsequent revision of the administrative decision.
For evidencing that a trade mark has acquired secondary meaning before Brazilian courts, the main elements are:
- time of continuous use in Brazil;
- acknowledgment by the competition;
- notoriety (recognition by Brazilian consumers);
- period of time where exclusive use was enjoyed; or
- non-contestability by third parties.
Additional factors added by Brazilian scholars include the applicant's intent to distinctive use, which consists in repeated efforts to make the trade mark distinctive, removing the same from public domain.
2.10 How long on average does registration take?
If there are no objections raised, registration issues on average about three to four years after filing.
2.11 What is the average cost of obtaining a trade mark in your jurisdiction?
An average overall figure not including representative fees is USD 295.00, which consists of the following:
- filing of trade mark application in one class (electronic form with free specification of goods/services): roughly USD 105.00; and
- payment of issuance fees and first 10-year term of the registration, including the Certificate of Registration: roughly USD 190.00.
When considering representative fees, a reasonable budget for an application in one class is between USD 500.00 and USD 900.00.
2.12 Is there more than one route to obtaining a registration in your jurisdiction?
No, a trade mark registration can only be granted by the BPTO and, for now, no alternative routes have been implemented in Brazil (such as the Madrid Protocol, which is still under discussion).
2.13 Is a Power of Attorney needed?
Yes, a Power of Attorney is one of the minimum requirements and must be filed together with the trade mark application or, upon payment of additional fees, within 60 days after filing.
In the case of foreign applicants, the Power of Attorney is required to empower representation both administratively and judicially, and to receive service of summons.
2.14 If so, does a Power of Attorney require notarisation and/or legalisation?
Neither consular legalisation nor notarisation are required.
2.15 How is priority claimed?
The claim to priority must be made at the time the application is filed and may be supplemented within 60 days by other priorities that precede the filing date in Brazil.
The claim to priority shall be evidenced by means of a suitable document of origin, indicating the number, the date, and the reproduction of the application or registration, and must be accompanied by an uncertified translation. When not filed together with the application, the document evidencing priority must be submitted within four months counted from the filing date, under penalty of loss of the priority.
In the event that priority has been obtained through assignment, the corresponding document must be submitted together with the priority document.
2.16 Does your jurisdiction recognise Collective or Certification marks?
Yes, both collective and certification marks are recognised and registrable in Brazil.
In the case of collective marks, the application can only be filed by a legal person who represents the collectivity, which may engage in a different activity from that of its members, and must contain the regulations governing use of the mark.
In the case of certification marks, the application can only be filed by a person that has no direct commercial or industrial interest in the certified products or services and must contain (i) the characteristics of the products or services to be certified, and (ii) the control measures that the owner shall adopt.
3 Absolute Grounds for Refusal
3.1 What are the absolute grounds for refusal of registration?
The following are considered absolute grounds for refusal (related to the intrinsic qualities of the mark) and are statutorily barred from registration under the Brazilian IP Act:
- crests, armorial bearings, medals, flags, emblems, distinctions and monuments, as well as their respective names, representations or imitations, when they are of an official or public character, whether they are national, foreign or international;
- an isolated letter, numeral and date;
- an expression, representation, drawing or any other sign that is contrary to [accepted principles of] morality and good conduct or is offensive to a person's honour or image, or is an affront to the freedom of conscience, belief, religious cult or ideas and feelings worthy of respect and veneration;
- the designation or acronym of a public entity or agency, unless registration is applied for by the public entity or agency itself;
- generic, necessary, common, usual or simply descriptive signs, when they are related to the products or services they identify, or those commonly used to indicate a characteristic of the products or services regarding their nature, nationality, weight, value, quality and time of production or rendering of a service;
- signs or expressions used merely as a means of advertising;
- colours and their names;
- a sign that leads to a false indication as to origin, source, nature, quality or utility of the products or services for which the mark is intended;
- the reproduction or imitation of an official hallmark regularly used to guarantee a standard of any kind or sort;
- the reproduction or imitation of a title, policy, coin and paper currency of the Union, the States, the Federal District, the Territories, the Municipalities or of any country;
- technical terms used in industry, science and art that are related to the products or services they identify; and
- the necessary, common or usual form of a product or packaging, or also a form that cannot be dissociated from a technical effect.
3.2 What are the ways to overcome an absolute grounds objection?
The applicant may only overcome absolute grounds refusals based on descriptiveness, deceptively misdescriptive meanings, slogans or lack of distinctiveness, in which case it will be required to argue, with appropriate supporting evidence, that the trade mark is inherently eligible for registration. As explained in question 2.9, the BPTO is unwilling to accept arguments of acquired distinctiveness through use, though secondary meaning is recognised by Brazilian courts.
If refusal is grounded on prohibitions relating to the protection of morality or public order, it is not possible to overcome the objection unless the applicant evidences that the absolute grounds were not applicable to that specific case.
3.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?
Any decision can be appealed in its entirety to the Trademark Board of Appeals of the BPTO.
Partial appeals are also accepted in a scenario where the trade mark application was allowed with a disclaimer of non-exclusive rights. In this case, the applicant is required to pay the final issuance fees and concomitantly appeal against the disclaimer.
3.4 What is the route of appeal?
Once the notice of refusal to registration is published, the applicant will have an unextendable 60-day deadline to file an appeal with the Trademark Board of Appeals of the BPTO. The appeal will have the full effects of suspending the decision until the President of the BPTO ultimately decides to follow or disregard the opinion provided by the Trademark Board of Appeals.
The President's decision is unappealable and will terminate the administrative phase.
Notwithstanding, any decision by the BPTO is susceptible to revision by a Brazilian Federal District Court, and therefore not only is the decision to maintain the rejection of an application (rendered by the President of the BPTO) reversible through judicial proceedings, but also the first instance refusal. This means applicant's may decide whether to appeal a notice of refusal or take the discussion directly to court.
4 Relative Grounds for Refusal
4.1 What are the relative grounds for refusal of registration?
The following are considered relative grounds for refusal (related to conflicts with earlier trade mark rights belonging to third parties) and are statutorily barred from registration under the Brazilian IP Act:
- the reproduction or imitation, either wholly or in part, even with additions, of another person's registered trademark to distinguish or certify identical, similar or related products or services, liable to cause confusion or association with the other person's mark;
- the reproduction or imitation of the characteristic or distinguishing element of a third party's title of establishment or company name, liable to cause confusion or association with such distinctive signs;
- a geographical indication and its imitation liable to cause confusion, or a sign that may falsely lead to a geographical indication; the reproduction or imitation of a sign that has been registered as a collective or certification mark by a third party;
- the name, award or symbol of an official or officially recognised sporting, artistic, cultural, social, political, economic or technical event, as well as an imitation liable to create confusion, except by authorisation of the competent authority or entity promoting the event;
- the legal name or corresponding signature, family name or patronymic and the image of third parties, except by consent of the owner, his heirs or successors in title;
- well-known pseudonyms or nicknames and individual or collective artistic names, except by consent of the owners, their heirs or successors in title; literary, artistic or scientific works, as well as titles that are protected by copyright and are liable to cause confusion or association, except by consent of the author or owner; an object that is protected by registration as an industrial design in the name of a third party; and
- a sign that imitates or reproduces, either wholly or in part, a trade mark which the applicant clearly could not be unaware of as a result of his activity, in the name of a person established or domiciled in Brazilian territory or in a country that is bound to Brazil by agreement, or that assures reciprocity of treatment, if the mark is intended to identify identical, similar or related products or services liable to cause confusion or association with the other person's mark.
4.2 Are there ways to overcome a relative grounds objection?
To overcome objections based on conflicts with earlier trade mark rights belonging to third parties, the applicant may submit arguments, with appropriate supporting evidence, that confusion is not likely and also limit the specification of goods or services.
However, it is not possible to apply for a limitation on the trade mark at this stage. The BPTO only accepts modifications to the trade mark (removal of non-registrable element) provided (i) the main characteristics of the application are not changed, and (ii) if requested by the applicant prior to examination.
Coexistence agreements and letters of consent are not binding to the BPTO and are merely received as evidence supporting the possibility of coexistence. Based on this interpretation, it is not uncommon for agreements of this nature to be disregarded at the administrative sphere, whereas they are widely accepted by Brazilian courts.
It is also possible to overcome relative grounds objections by invalidating the earlier registration cited as ground for refusal, by means of either administrative nullity proceedings or a non-use cancellation action.
4.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?
See question 3.3.
4.4 What is the route of appeal?
See question 3.4.
5.1 On what grounds can a trade mark be opposed?
An opposition can be based on absolute and/or relative grounds (see questions 3.1 and 4.1), as well as bad-faith.
Further, oppositions invoking special rights may be filed in exception to general rules of the Brazilian IP Act, such as (i) the principle of territoriality, (ii) the principle of specialty, and (iii) the principle of attributive trade mark rights, as explained below:
(i) Oppositions grounded on well-known trade marks.
Ownership of a trade mark is acquired by a valid registration, which grants the right to exclusive use throughout Brazilian territory. As a rule, a prior trade mark application or registration is required to base an opposition.
However, a trade mark that is well-known in its field of activity (pursuant to the provisions of Section 126 of the Brazilian IP Act and Section 6 bis of the Paris Convention) will enjoy special protection, irrespective of whether or not it has been previously filed for or registered in Brazil. As such, by submitting evidence supporting the trade mark is well-known in Brazil (and not only abroad) an opposition can be filed regardless of a prior application existing at the BPTO (exception to the principle of territoriality). Nonetheless, it is mandatory to file a trade mark application within 60 days of the opposition.
(ii) Oppositions grounded on highly renowned (reputed) trade marks.
The right to the exclusive use of a trade mark is limited to the goods or services covered by the registration. As a rule, a prior trade mark application or registration can be used to base an opposition as long as the opposed trade mark was applied to identify identical, similar or related goods or services.
However, a trade mark that is considered highly renowned will be assured special protection in all fields of activity (pursuant to Section 125 of the Brazilian IP Act). As such, by obtaining the highly renowned status (which must be applied for previously through specific proceedings), an opposition can be filed against similar trade marks in any of the existing classes of products or services (exception to the principle of specialty).
(iii) Oppositions grounded on prior fair use.
The priority in registration is based on the filing date of the trade mark application or priority document. As a rule, Brazil adopts the first-to-file system and prior use does not support a priority claim.
However, any person who, in good faith, on the priority date or the filing date of the application, was using an identical or similar mark to distinguish or certify identical, similar or related products or services for at least six months in Brazil shall enjoy a right of precedence in registration (pursuant to Section 129, 1st Paragraph of the Brazilian IP Act). As such, an opposition against a more senior application is possible if based on prior use (exception to the principle of attributive trade mark rights).
5.2 Who can oppose the registration of a trade mark in your jurisdiction?
Any natural persons or legal (juristic) persons under public or private law that would be damaged by a registration may oppose the trade mark application.
5.3 What is the procedure for opposition?
Once an application is published in the Official Bulletin, any interested third parties will have an unextendable 60-day term to file an opposition. A supplemental deadline of 60 days may be required once to submit further documents; however, additional arguments that have not been previously raised in the opposition will be disregarded.
Roughly one to two months from filing, the notice of opposition will be published in the Official Bulletin, triggering the applicant's deadline to submit a response, which is not mandatory and will not result in a default decision.
In any event, the BPTO will conduct the substantive examination of the application and, in addition to the arguments raised in the opposition, will consider any absolute or relative grounds for refusal, including other prior registrations for identical or similar trade marks, in the name of different third parties.
6.1 What happens when a trade mark is granted registration?
Once a trade mark is registered, the grant notice will be published in the Official Bulletin. The BPTO will issue a Certificate of Registration in electronic form roughly two months from the payment of the final issuance fees.
As mentioned in question 2.4, the final issuance fees are payable within 60-days of the allowance of the application. Therefore, when the trade mark is granted registration, there are no further fees payable for the registration certificate to be issued.
6.2 From which date following application do an applicant's trade mark rights commence?
Ownership of a trade mark is acquired by a valid registration, which grants the right to exclusive use throughout Brazilian territory.
Notwithstanding, a pending trade mark application is an expectant right, and as such the Brazilian IP Act assures the applicant the right to safeguard its material integrity and reputation. The applicant is therefore allowed to assign the trade mark; license its use; and file oppositions; however, is prevented from filing an infringement claim.
A trade mark infringement claim can only be grounded on a valid registration, unless it is based on unfair competition (passing off).
6.3 What is the term of a trade mark?
The registration term is 10 years, renewable for equal successive periods.
6.4 How is a trade mark renewed?
The renewal application must be filed during the last year of the term of registration and must be accompanied by proof of payment of the respective official fee, roughly USD 270.00.
If the renewal application is not filed prior to the expiration of the term of registration, the applicant may do so within the following six months, upon payment of an additional fee, roughly USD 410.00.
7 Registrable Transactions
7.1 Can an individual register the assignment of a trade mark?
Yes. The recordal of a trade mark assignment (application or registration) is requested via a specific form, enclosing either a simple assignment document signed by the parties or their legal representatives, or the original assignment document or simple copy thereof and power of attorney executed by the assignee. Legalisation and notarisation are not mandatory for recordation purposes.
7.2 Are there different types of assignment?
No. It is not possible to request the partial assignment of a trade mark application or registration, for instance (e.g. for certain goods or services only). According to the Brazilian IP Act, the assignment must include all registrations or applications that cover identical or similar trade marks covering identical, similar or related products or services under the penalty of having the non-assigned registrations cancelled or the applications dismissed (Section 135 of the Brazilian IP Act). Recently the BPTO started raising official actions during the assignment proceeding requesting the parties to amend the assignment document to avoid the cancellation or dismissal of the marks that were not assigned and would fall in this legal provision.
7.3 Can an individual register the licensing of a trade mark?
Trade mark licence agreements are recorded before the BPTO's Contracts Division and therefore follow a different proceeding from trade mark assignment recordals, which are processed before the Trade Mark Division. For licence agreements, it is necessary to present a specific form enclosing either the original or certified copy of the license agreement, duly notarised and legalised before a Brazilian Consulate.
7.4 Are there different types of licence?
Yes. Both non-exclusive and exclusive licences are eligible for recordal, as well as sublicences. Royalties though may only be paid from the licence of a trade mark registration.
7.5 Can a trade mark licensee sue for infringement?
A licensee may sue for infringement only if the licence agreement foresees its legitimacy for defending the mark before Courts and upon the recordal of the licence agreement before the BPTO.
7.6 Are quality control clauses necessary in a licence?
Quality control clauses are not mandatory in trade mark licence agreements and the absence thereof is not legally foreseen as a cause for the revocation of the registration.
7.7 Can an individual register a security interest under a trade mark?
A security interest may be created on a trade mark security agreement to warrant the fulfilment of obligations maintained between the owner of the mark and the lender. In order to be effective, the BPTO must record the lien or limitation.
7.8 Are there different types of security interest?
Yes and all types of security interest are eligible for recordal before the Brazilian PTO.
8.1 What are the grounds for revocation of a trade mark?
The grounds for revocation, provided for by Section 142 of the Brazilian IP Act, are the following: (i) upon expiration of the registration term (failure to renew the registration for an additional 10-year period); (ii) express renouncement of the rights over the trade mark (either wholly or for part of the products or services); (iii) cancellation on non-use grounds; or (iv) failure to comply with Section 217 of the Brazilian IP Act, according to which a person domiciled abroad must appoint and maintain an attorney domiciled in Brazil, duly empowered to represent the party and receive service of summons. Only item (iii) requires a specific proceeding to have the mark revoked.
The revocation (or forfeiture) is determined if the use of the mark has not been initiated in Brazil or if the use has been interrupted for more than five consecutive years; or if during the same period the mark has been used with modifications which constitute an alteration of its original distinctive character protected by the certificate of registration.
The mark may be declared partially revoked if the registrant fails to evidence the use of the mark in connection with certain products or services that are either similar or related to those in respect of which use of the mark was proved.
8.2 What is the procedure for revocation of a trade mark?
The procedure for the renouncement of the rights is very simple. The presentation of a simple form requesting the homologation of the renouncement is enough. It should be noted though that the legal representative must have specific powers to renounce the rights over a trade mark registration.
As for the revocation based on non-use grounds, the Brazilian IP Act provides a specific proceeding. The proceeding is initiated by the filing of a specific form in which the applicant attests its legitimacy for requesting the forfeiture declaration. The legitimacy of the applicant may lie on a trade mark application, copyright or any other arguable right against the targeted registration.
8.3 Who can commence revocation proceedings?
Any third interested party as from the fifth year of the registration (counted as from the publication of the issuance decision). A nonuse cancellation action will be dismissed in case use of the mark has been evidenced or non-use justified in a previous proceeding filed less than five years from the request.
8.4 What grounds of defence can be raised to a revocation action?
In a non-use cancellation action, the registrant must either evidence the effective use of the mark for the past five years or justify the non-use of the mark on legitimate grounds (e.g.: bankruptcy; or failure to initiate its activities in Brazil, despite evidencing serious efforts for doing so). From experience, invoices and/or certificates of importation attesting the products have actually entered the country have more weight in the overall analysis of the effective use of the mark, though by Law all available evidence should be taken into consideration by the examiner (e.g.: advertisements; pictures; videos; printed materials in general, among others, as long as they are duly dated, the mark is clearly perceived and the products and services are described).
8.5 What is the route of appeal from a decision of revocation?
Appeals are available for the defendant, in case the registration is revoked, or for the applicant, in case of maintenance of the registration, within 60 days as from the publication of the decision. The President of the BPTO will give the last word on the appeal. In practical terms, the appeal is analysed by a second instance examiner who may either accept or reject the appeal and then this decision is submitted to the President of the BPTO for homologation. The decision on the appeal is final and ends the administrative sphere. If, thereafter, either party decides to challenge the decision, it will be necessary to initiate a specific lawsuit before a Federal Court contesting the BPTO's decision (Section 146 of the Brazilian IP Act).
9.1 What are the grounds for invalidity of a trade mark?
The invalidity proceeding may be initiated by any interested party, even the BPTO ex officio based on the violation of any provisions of the Brazilian IP Act. Most of invalidation proceedings though are based on the violation of one or more items of Section 124 of the Brazilian IP Act (both absolute or relative grounds for the invalidity of a registration) or Section 126 of the Brazilian IP Act that protects well-known marks (article 6 bis of the Paris Convention).
9.2 What is the procedure for invalidation of a trade mark?
The invalidation of a trade mark registration may be initiated by any interested party within 180 days, counted as from the publication of the issuance decision before the BPTO or within five years by the filing of a specific lawsuit before a Federal Court. A notice informing the registrant that the invalidity proceeding has been initiated is published, opening a 60-day term for a response. After that, a decision is rendered by the second instance examiner and homologated by the President of the BPTO. No appeals lie from such a decision, which closes the administrative sphere and may only be contested before Courts.
9.3 Who can commence invalidation proceedings?
Any interested third party or the BPTO ex officio.
9.4 What grounds of defence can be raised to an invalidation action?
A wide variety of defence arguments may be raised such as prior existing rights (e.g. trade mark registrations for similar products or services); prior coexistence of similar marks in the same segment; well-known status among others.
9.5 What is the route of appeal from a decision of invalidity?
The decision is final before the administrative branch and may only be contested by the filing of a specific lawsuit before a Federal Court.
10 Trade Mark Enforcement
10.1 How and before what tribunals can a trade mark be enforced against an infringer?
An infringement lawsuit may be filed before a state court (state jurisdiction) where the infringement has taken place or where the defendant has domicile. In exceptional cases, the infringement lawsuit may be filed before a Federal Court when the defendant is a federal body or federal company, for instance. Most cases though fall on the general rule and are brought before a state court.
10.2 What are the pre-trial procedural stages and how long does it generally take for proceedings to reach trial from commencement?
Upon the filing of the lawsuit, the Court will analyse if the initial brief meets the formalities required by the Brazilian Civil Procedure Code (and, if that is the case, analyse and decide on preliminary injunction request, if any). After that, and if all the requirements were duly complied with, the Court will determine that the defendant be served with summons. The defendant has 15 days to file a reply to the lawsuit under penalty of the facts raised by the plaintiff being considered as true. If a response is filed, the plaintiff is allowed to file a rebuttal within 10 days. After such period, the Court will determine which evidences are allowed to be produced (including the need of an expert opinion) beginning the evidence phase. Once the evidence phase is completed, the case is ready to be tried. The term for such proceedings may vary a lot depending on the complexity of the case and on the speed of the Court. A decision on the merits in an ordinary trade mark infringement case may be expected within six months to two years on average.
10.3 Are (i) preliminary and (ii) final injunctions available and if so on what basis in each case?
Both preliminary and final injunctions are available and may be requested and granted to halt infringement before or concomitantly with a decision on the merits. In the case a preliminary injunction is requested, the plaintiff is required to demonstrate a) urgency, and b) clear cut evidence of infringement. Another requirement is the analysis of the hardship caused by the decision and the possibility of returning the parties to the status quo ante in case the injunction proves unfair or unnecessary. On its turn, final injunctions are generally granted when the Court confirms the decision on the merits.
10.4 Can a party be compelled to provide disclosure of relevant documents or materials to its adversary and if so how?
Yes, upon the Courts assessment and concurrence with the need for the specific evidence. Depending on the nature of the documents, the Court may determine the proceeding to be held in secrecy protecting thus the confidentiality of the information provided.
10.5 Are submissions or evidence presented in writing or orally and is there any potential for cross-examination of witnesses?
In trade mark infringement cases the Court usually relies on documentary evidence only, though oral evidence may also be requested by the parties such as depositions of the representatives of the parties and testimony of witnesses. Oral evidence is usually produced in hearings (whenever necessary, the hearing may occur in a different venue from the one the case is being processed and recorded). Cross-examination of witnesses may also be determined at the Court's discretion.
10.6 Can infringement proceedings be stayed pending resolution of validity in another court or the Intellectual Property Office?
Yes, an infringement proceeding may be stayed by an annulment action or proceeding involving the same mark until a resolution on its validity is rendered, at the Court's discretion.
10.7 After what period is a claim for trade mark infringement time-barred?
A trade mark infringement claim may be raised during the validity of the mark. Nonetheless, there is a five-year statute limitation to file the lawsuit counted as from the date the plaintiff became aware of the infringement and also a five-year statute limitation to request past damages
10.8 Are there criminal liabilities for trade mark infringement?
According to the Brazilian Law, a crime against a trade mark registration is committed by whoever: (i) reproduces a registered mark without consent, or imitates it in a manner that can lead to confusion; or (ii) alters another person's registered mark, already in use on a product placed on the market. A crime against a trade mark registration is also committed by whoever imports, exports, sells, offers or displays for sale, conceals or keeps in stock: (i) products identified by another person's trade mark, unlawfully reproduced or imitated either wholly or in part; or (ii) a product of his own industry or trade, held in a vessel, container or packaging, bearing another person's legitimate trade mark.
All IP-related crimes are generally considered petit crimes and, though punishable with detention and/or fine, the detention is usually converted into a fine.
It should be noted that the detention penalties may be increased by one third to one half if: (a) the offender is or was a representative, attorney or record, agent, partner or employee of the owner of the registration or a licensee; or (b) the mark that has been altered, reproduced or imitated is highly renowned or well known, or is a certification or collective mark.
10.9 If so, who can pursue a criminal prosecution?
Prosecution should be commenced by the filing of a complaint by the owner of the mark or licensee (in that case provided the licensee is a legitimate party), except for the infringement of national, foreign or international armorial bearings, crests or distinctions, when they are of an official character, case in which the criminal action will be public.
10.10 What, if any, are the provisions for unauthorised threats of trade mark infringement?
There are no provisions punishing threats of trade mark infringement.
11 Defences to Infringement
11.1 What grounds of defence can be raised by way of non-infringement to a claim of trade mark infringement?
The defendant may argue a wide variety of defences such as: the sign does not meet the trade mark function; the parties are noncompetitors; there are prior existing similar or identical marks being used in the same market segment; the mark lacks intrinsic distinctiveness and therefore should endure coexistence; continued use or prior use of the mark in good faith and without opposition from the title holder; prior existing rights over the same sign; among others. Most importantly, and whenever applicable, the defendant must evidence that there is no risk of confusion and/or undue association between the marks.
Besides the above possible defences, according to the Brazilian IP Act the trade mark owner may not: (i) prevent merchants or distributors from using their own distinctive signs together with the mark that identifies the product, in its promotion and commercialisation; (ii) prevent manufacturers of accessories from using the trade mark to indicate the destination of the products, provided that fair competition practices are followed; (iii) prevent free circulation of a product placed on the domestic market by the owner of by another party with the owner's consent; and (iv) prevent reference to the trade mark in a speech, scientific or literary work or in any other publication, provided that this is done with no commercial occultation and without detriment to the distinctive character of the trade mark. In all these cases, the use of the mark is legitimate and justifiable.
11.2 What grounds of defence can be raised in addition to non-infringement?
Procedural flaws may be raised in addition to non-infringement arguments as well as the arguable nullity of the mark (e.g. trade mark that is evidently descriptive and/or does not meet the trade mark function).
12.1 What remedies are available for trade mark infringement?
A wide variety of remedies is available for trade mark infringement in both civil and criminal spheres. In the civil sphere, the most common ones are: search and seizure of products; damages (both moral and material recovery of damages); ex parte injunctions with the broadest possible scope (e.g. change of trade dress; replacement of labels; withdrawal of websites, among others); and monetary penalties for the non-compliance of injunctions. In the criminal sphere it is possible to seek search and seizure orders; destruction of counterfeits, among other measures.
12.2 Are costs recoverable from the losing party and if so what proportion of the actual expense can be recovered?
Usually, the plaintiff advances Court fees (and expert fees, whenever the Court determines an expert opinion). If the plaintiff wins the lawsuit, then it will be entitled to full recovery of the court fees. If the plaintiff partially wins, it may recover half of the Court fees advanced in the beginning of the lawsuit. Attorney's contractual fees are not recoverable.
13.1 What is the right of appeal from a first instance judgment and is it only on a point of law?
The losing party may appeal to the Appellate Court bringing into light all factual and law matters discussed in the decision. The decision rendered by the Appellate Court on its turn may also be appealed but at this stage, only regarding matters of law (in case an appeal is filed to the Superior Court of Justice), or constitutional questions (in case an appeal is filed to the Supreme Court). Other secondary appeals may be filed throughout the prosecution of the case, but with a limited and/or specific scope.
13.2 In what circumstances can new evidence be added at the appeal stage?
As a rule, it is not possible to bring new evidence at the appeal stage. However, the current Civil Procedure Code provides that new facts may be raised after the decision on the merits if, due to their serious and objective nature, at the time of the fact they were not made available to the party. In the same manner, facts that due to an existing obstacle were not accessible to the lawyer or made available to the trial judge at the time they took place, may be submitted as new evidence.
14 Border Control Measures
14.1 What is the mechanism for seizing or preventing the importation of infringing goods or services and if so how quickly are such measures resolved?
The proceeding may vary slightly depending on the Authority involved. In principle, counterfeited products or infringing services may be halted ex officio by the Authority that will contact the local representative of the trade mark owner, who has 10 days, renewable for an additional 10 days, to provide the Customs with a response regarding the infringement. As this scrutiny is conducted randomly by Customs, there is no 100% assurance that all counterfeits are satisfactorily blocked.
However, interested parties have mechanisms to alert the relevant Authorities of their trade mark rights and provide information regarding the identification of knock-offs.
Once infringement is confirmed, the Customs Authority will seize the products/services and may apply the penalty of forfeiture (and destruction). In some cases, the Customs require the party to file a specific lawsuit determining the final seizure and destruction. The plaintiff covers the costs entailed by these measures.
15 Other Related Rights
15.1 To what extent are unregistered trade mark rights enforceable in your jurisdiction?
The most usual grounds for the enforcement of unregistered marks are unfair competition (passing off) rules. Also, according to Section 130 of the Brazilian IP Act a trade mark applicant is assured the right to safeguard the material integrity or reputation of the mark and, for that purpose, the applicant is entitle to notify the infringer or even initiate a lawsuit with preventive purposes.
It should be noted though that Brazil adopted the attributive system, that is to say, trade mark rights are fully enforceable only upon registration. Therefore, a lawsuit can only be brought by the applicant or user in very limited cases and in most of them based on associated rights such as company name; prior use; copyrights and so on (e.g. a lawsuit could be brought seeking damages due to unethical or bad faith behaviour of distributor, local representative or partner, for instance).
15.2 To what extent does a company name offer protection from use by a third party?
In Brazil, company names are protected under the limits of the territory of the state it has been registered in. In order to afford protection in the whole country, the company name must be registered before the Registrar of Commerce of all states, which is costly and, in most cases, not sufficient to prevent the use or even registration of a similar company name by a competitor. The limited protection afforded by nationals compete with the territorial protection afforded to foreign companies by Article 8 of the Paris Convention and therefore there is a lot of controversy on the interpretation and harmonisation of the local law and said conventional provision.
15.3 Are there any other rights that confer IP protection, for instance book title and film title rights?
In order to deserve the protection of the Brazilian IP Act and achieve registration as a trade mark, the sign must meet trade mark function, that is to say, be able to distinguish a product or service from another one that is identical, similar or related, of different origin. Therefore, book and film titles may not be protected under the trade mark framework, as they may not meet trade mark function. Besides, protection of book titles and film titles fall within the scope of copyrights (Act No. 9.610/98).
It should be noted that the Brazilian IP Act forbids the registration of literary, artistic or scientific works, as well as titles that are protected by the author's rights and are liable to cause confusion or association, except by the consent of the author or right owner. This prohibition also applies for the translation of book and film titles.
16 Domain Names
16.1 Who can own a domain name?
A domain name may be registered by a natural person or legal entity, either Brazilian or foreign. The enrolment of foreign entities as registrants follow a specific proceeding and a proxy holder must be retained in Brazil (residing in Brazil). The company is also requested to execute a document committed to establish activities in Brazil within 12 months as from the requirement.
16.2 How is a domain name registered?
The proceeding is very simple and is made online before the Brazilian Registrar website: http://registro.br/. If the domain name is available, the registrant is required to pay the respective fees. Soon after payment, the registration is secured. In order to register a domain under the name of a foreign entity, though, the entity must first be enrolled before Registro.br.
In order to enroll the foreign entity as a domain name registrant it is necessary to present a specific Power of Attorney; a Declaration of Business Activity, which includes the legal entity's name, address, telephone number, stated business purpose, the name and position of the responsible party, and a summary of the commercial activities; and a Declaration of Obligation, in which the entity agrees to incorporate a Brazilian subsidiary within 1 (one) year from the date of submission of the application for an identification number, or in which the entity agrees to assign any domain name to a Brazilian company within 1 (one) year from the execution of the Declaration. All documents must be notarised and legalised before a Brazilian consulate and translated by a sworn translator.
16.3 What protection does a domain name afford per se?
The registration affords the right to impede the use and/or enforce the domain name registration against third parties by initiating, for instance, an UDRP proceeding (before both the Brazilian registrar or through one of the accredited arbitration centres such as WIPO). The protection afforded to the domain name is similar to the protection afforded to companies' DBA name and are protected by unfair competition rules.
17 Current Developments
17.1 What have been the significant developments in relation to trade marks in the last year?
The BPTO has adhered to the international platform TmClass for trade mark searches with an aim to improve the quality of the decisions. Besides quality concern, the Office is effectively engaged in reducing the backlog of trade marks by reviewing their internal proceedings and reducing excessive formalities, especially regarding appeals and nullity actions that are currently taking up to eight years to be decided.
17.2 Please list three important judgments in the trade marks and brands sphere that have issued within the last 18 months.
Decision rendered by the Court of Appeals of São Paulo declared the registered mark INSULFILM generic to identify protective glass film. Despite having concluded that the mark lost its attractive power and capability of identifying protective glass film, the Court considered that the rights over the registration should prevail against the use by third parties, given the lack of an express provision in the Law allowing the annulment of the registration in such grounds (after the statute of limitations of five years). The Court ended up condemning the "infringer" that was using the expression INSULFILM in both moral and material damages.
Another relevant decision was rendered by the Superior Court of Justice, which, irrespective of the binding precedents that forbid the analysis of factual matters raised in a special appeal, has admitted the special appeal brought by SOUZA CRUZ S/A against both COMPAÑIA INDUSTRIAL DE TABACOS MONTE PAZ S/A and the BPTO, aiming at reviewing the decision that declared their mark COLORADO forfeited. The appeal was well-framed and pointed out that the rule that determines the use of the mark does not distinguish between the commercialisation and mere production in the Brazilian territory. Despite having considering that both commercialisation and production and thereafter exportation are considered standards of use, the Court analysed in depth the amount of units actually exported and ended up by maintaining the previous decision that declared trade mark COLORADO forfeited.
The Court of Appeals of São Paulo ruled on the rights afforded by a trade mark application in a case involving the use of the mark ANDORINHA by two contending companies named EMPRESA DE TRANSPORTES ANDORINHA S/A and VIAÇÃO ANDORINHA LTDA that act in the transportation field and have pending applications for the same mark before the BPTO. It was evidenced in the case files that the companies were being erroneously confused by consumers that sued one or the other by mistake. The Court though ruled that the application grants the right to safeguard the material integrity and reputation of the mark but does not grant exclusive rights over it. The companies indeed act in the same field, but provide services in different regions and therefore are not direct competitors. Likewise, the companies' names are protected locally within the territory of the state and therefore the use of the same characteristic element does not configure infringement. The Court rejected the appeal and allowed the concomitant use of the marks.
17.3 Are there any significant developments expected in the next year?
The BPTO appointed a new president on 28 July 2015, Luiz Otávio Pimentel, who is taking steps to reduce the Office's backlog of trade mark applications. However, at the moment, his focus is still concentrated in procedural issues (internal proceedings) and no significant developments are expected this year.
17.4 Are there any general practice or enforcement trends that have become apparent in your jurisdiction over the last year or so?
Brazil is about to adopt a new Civil Procedure Code that will substantially modify and accelerate judicial proceedings, especially in the enforcement/execution phase allowing the parties to effectively collect damages.
Previously published by Global Legal Group Ltd
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.