Brazil: Protection Of Trademark Regardless Of Registration In Brazil

The Special Federal Attorney´s Office, along with Brazil´s Patent and Trademark Office (PTO), recently drew up an Opinion (No 0002-2015-AGU/PGF/PFE/INPI/COOPI-LBC-1.0) on the practical application of clause XXIII of article 124 of the Industrial Property Law (local acronym LPI) No 9279/96.

Article 124, XXIII, of the Industrial Property Law (LPI), bans the registration as a trademark of a product or service that reproduces or imitates, wholly or partly, a trademark that the new applicant obviously could not have failed to know about due to its own activity, the holder of which is based or domiciled in Brazilian territory or in a country with which Brazil has an agreement or is guaranteed reciprocal treatment, when the trademark is obviously aimed at presenting a product or service that is identical, similar or alike, and could cause confusion or association with that unrelated trademark.

Despite the fact that the consultation from which the Opinion originated focused on answering the question of whether the holder of a trademark based or domiciled in a signatory country of the Paris Convention could make use of or bring about the application of article 124, XXIII, of the Industrial Property Law (LPI), for the protection of its priority trademark rights, as this Convention does not have a word for word correspondent provision, various other aspects and/or interpretations referring to this same provision ended up being faced, which makes the production of this present work important.

The first aspect of the Opinion we should highlight is the one which answers the question raised in the previous paragraph. According to the conclusion arrived in the Opinion, article 124, XXIII, of the Industrial Property Law (LPI), does apply to the holders of trademarks in signatory countries to the Paris Convention.

The reason why we fully agree with this is that, although the Paris Convention does not have a text or norm that corresponds exactly to that of article124, clause XXIII, of the Industrial Property Law (LPI), it does have provisions, principles or values that are inserted or even justify the existence of this provision in Brazilian law.

This is the case, for example, with the principle of the suppression of unfair competition, that is expressly provisioned for in the Paris Convention and which does not cease to be guidance for its very existence in Brazilian law, in article 124, clause XXIII, of the Industrial Property Law (LPI). In this sense, the Opinion did a good job on this matter by stressing the following: "The intention of art. 124, XXIII, of the Industrial Property Law (LPI) is the suppression of unfair competition". Furthermore, it added: "The suppression of unfair competition is an activity inherent to the protection of industrial property".

Another good point the Opinion raised, although it only confirmed what had already been enforced in the recent Trademark Manual of the Patent and Trademark Office - PTO (Resolution INPI/PR No 142/2014), is that the application of clause XXIII, of art. 124, of the Industrial Property Law (LPI), is not, in any way, related to the established laws covering a highly renowned trademark.

This means that the holder of a trademark registered abroad, for example, in a signatory country of the Paris Convention, could challenge a trademark that is conflicting, claimed or registered by a third party in Brazil and in this case it is not necessary to demonstrate its highly-renowned reputation in one or more locations, although obviously nothing could prevent it from doing so.

As a result, it is enough for the trademark, in the name of this third person, to imitate or reproduce, wholly or partly, the international trademark, to present itself as a product that is identical, similar or like this latter, and it is certain or probable that this third party could not be unaware of its existence due to its own commercial activity.

This position, which only confirms what is already stated in the PTO´s Trademark Manual, does not lose its importance as it would go against the office´s previous position in its administrative jurisprudence and some legal precedents, that demanded the evidence of a trademark with a highly-renowned reputation that served as a base for the corresponding means of challenging it for the application of article 124, clause XXIII, of the Industrial Protection Law (LPI).

A third worthwhile issue that is also raised in the Opinion is that it does not allow the rejection or withdrawal of article 124, XXIII, of LPI, in the case of Opposition or Administrative Nullity Process (PAN), should the previous registration/model be national.

It is worth highlighting that this guidance also contrasts with the PTO´s administrative jurisprudence, which used to reject the allegation of a violation of article 124, clause XXIII, of the Industrial Property Law (LPI), in cases of opposition or Administrative Nullity Process (PAN) when the applicant in these processes had already registered a trademark in Brazil. The previous understanding was that article 124, XXIII, of the Industrial Property Law (LPI) would not be applicable in these cases, bearing in mind the immediate application of clause XIX of the same legal provision of the LPI, that determines in overall terms, that trademarks should not be registered that reproduce or imitate pre-existing registered trademarks in an identical or similar market segment.

Therefore, the Opinion makes a timely ruling admitting the accumulation of violation to the clauses XIX and XXIII of article 124 of the Industrial Property Law (LPI), in cases of opposition and Administrative Nullity Process (PAN), even though the applicant in these processes has a priority trademark registration in Brazil.

A final position taken from the Opinion and which deserves more critical attention from us is one that defends a more restrictive interpretation of the expression "trademark that the applicant could evidently not not know about, due to its activity".

According to the Opinion, where there is a question over how much knowledge the holder of the conflicting trademark had about the previous trademark, in a concrete case, it should be considered that it had none.

Moreover, according to the Opinion, the challenging party would have the burden of proving, including through documentation, that the third party, the applicant of the conflicting trademark, had previous knowledge of its priority trademark.

In our first reading of the opinion, we disagreed with this guidance. Our preliminary understanding was that it seemed an over exaggeration to demand documentary evidence from the priority or model trademark holder that the third party, that claims an equal or similar trademark to its, for an equal or similar market segment, to show that it had knowledge of the original trademark.

Similarly, we do not see much sense in this interpretation that is always restrictive, involving the knowledge or lack of knowledge of the third party of the previous or original trademark. We believed that in the cases where the holder of the original or previous trademark did not have to prove that the third party, that applied for the conflicting trademark, had prior knowledge of the priority trademark, as it had never maintained any kind of relation, link or contact with this corporate entity or individual person which would naturally make this proof easier, as is well stated in the cases given as examples in the Opinion.

However, we later noted that, in the Opinion, the Attorney´s Office itself spots this practical difficulty by highlighting cases in which, bearing in mind the high degree of specialization of some business activities, there is no way the applicant (third party) for a trademark could not know about the trademarks on the market of its competitors.

The Opinion also cites the example of a third party which intends depositing the trademark in a very specific area, as is the case with jet engines, where it is unlikely that it did not know about its competitors´ trademarks, which would point to the application of clause XXIII of article 124, of the Industrial Property Law (LPI), in the case of reproduction or imitation of one of these trademarks. Therefore, in these cases, the Opinion indicates that it would not be necessary to prove prior knowledge of the trademark by the third party, by means of documentation (even because of the difficulty in producing it).

In these cases, the Attorney´s Office´s conclusion is that the holder of the priority trademark would only need to give an "explanation on the market segment of jet engines (number of companies that operate in the area, number of trademarks to identify the same products etc.)" to reach a conclusion on the obvious prior knowledge by the third party/applicant of its original trademark.

We believed there would be still other situations which would dispense with this requirement, defended in the Opinion and by some legal scholars in the area, that the holder of the model trademark should show, including by documentary proof, that the third party applicant for the conflicting trademark had knowledge of its previous trademark.

We now present some thoughts on trademarks that are completely fanciful or have a high degree of distinctiveness, i.e. arbitrary trademarks that convey nothing or are made up of words/signs that are not spoken or appear in the dictionary, such as Häagen-Daz (a trademark that is 100% fanciful).

In our view, in cases of reproduction or imitation by a third party of a priority trademark that is completely fanciful, like Häagen-Daz, directed at the same or similar segment of activity, leads or should lead to the inevitable conclusion that this third party had prior knowledge of the previous trademark.

We believe it is absolutely impossible or unlikely that this third party could have developed or created the very same fanciful or arbitrary trademark to identify commercial activities that are identical or analogous to the holder of the original trademark.

This explains our defense of the view that this constant restrictive position involving the knowledge or lack of knowledge of the third party of the previous or original trademark should be treated carefully or revised.

It is also worth highlighting that, in our understanding, when the lawmaker inserted the adverb "evidently" into article 124, clause XXIII, of the Industrial Property Law (LPI), it was with the intention of making it clear that, if the applicant for the more recent trademark acted in the same segment as the holder of the previous identical or similar trademark, it was because it (third party), evidently, knew this latter and not because it needed to make evident (prove) this prior knowledge in the concrete case, in line with the interpretation of the Opinion in this comment. However, this is our reading of the Attorney´s Office´s interpretation which, as we have already said, brings conclusions and guidance that are extremely relevant, enlightening and positive in relation to the application of clause XXIII, of article 124, of the Industrial Property Law.

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
DANIEL Legal & IP Strategy
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Similar Articles
Relevancy Powered by MondaqAI
DANIEL Legal & IP Strategy
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions