Brazil: Why Conduct Trademark Searches In Brazil?

Why Brazil?

When people think about Brazil they often imagine just another country in South America, like Argentina or Chile. The truth is that the Brazilian economy is bigger that the rest of the subcontinent put together. Also, although Brazil is the only country in South America which speaks Portuguese, there are more Portuguese speakers than Spanish speakers in South America as Brazil's population is greater than the rest of South America combined. It is also the most advanced economy in the region with nuclear power stations and heavy industry ranging from shipbuilding to the world's third largest producer of commercial jets.

Brazil is a top nine GDP country with over 205 million consumers that multinational companies ignore at their peril. With high barriers to entry and high interest rates, competition in Brazilian markets is generally quite relaxed, leading to high profit margins which can be a vital source of revenue to multinational companies in troubled times.

The most compelling reasons to trade in Brazil are financial. Few major companies can afford to ignore the Brazilian market. Brazil is the fourth biggest market for Coca-Cola, Mobile phones and the fifth biggest market for motor vehicles. Truly an interesting and even vital market for most major multinational companies.

Companies Entering Brazil?

Before starting to trade in any country, it is import to conduct trademark searches to verify if the trademarks the client intends to use are free for registration and use. Failure to conduct trademark searches could result in the need to rebrand products if a trademark is not available for registration. Worse still is the possibility of a third party filing a court action for trademark infringement if it has a registration on the trademark that the client started using in Brazil. As well as an award of damages, the trademark owner may be also able to obtain a preliminary injunction that would stop sales of products or services with the contested trademark. This would be particularly vexing if the client feels that it is the true owner of the trademark in question, as it was the first to start using the mark in its country of origin, but the third party registered it first in Brail.

Product Launches

As well as companies entering the Brazilian market for the first time, established companies should also conduct searches whenever they launch a product with a new or altered trademark. It can often cost millions of Dollars to prepare new packaging and advertising for a new product launch, which could be stopped in its tracks if the new mark were too close to a prior mark on the Brazilian PTO register for similar goods or services. Again, use of someone else's registered trademark could results in a preliminary injunction and millions of Dollars in damages.

Benefits of Searching

One of the main reasons it is so important to conduct trademark searches in Brazil is that Brazil is a first to file country. As such, the first company to file an application for a trademark will become the owner of that trademark. Having the earliest filing date is extremely important even though a company may have been using the same mark in their country of origin well before the third party mark. If a multinational company does not file in Brazil, another party may do so, and unless their mark is discovered and challenged, they could earn exclusive rights to the trademark in question.

Exception to First to File

Brazil is a first to file country, but there is an exception. Brazilian IP Law states that "Any person who, in good faith, on the priority date or the filing date of the application, was using for at least six months in Brazil an identical or similar mark to distinguish or certify identical, similar or related products or services shall enjoy a right of precedence in registration." As such, a party that has been using the trademark in good faith for six months before filing may claim priority.

That means that if company A has been using a trademark in Brazil since January 2014, and company B files an application for that trademark in August 2014, company A may claim priority before the PTO because it was using the mark in Brazil more than six months before company B filed its application for that mark. However, company A only gains the right of priority before the PTO. If company A does not take any action and company B's application issues to registration then it is company B that can file an infringement action against company A's use. Searching the PTO database to ascertain the situation and filing an application for a trademark a company intends to use is the best defense against this type of situation.

However, the right of precedence is only before the PTO. That means that if a company that is using a trademark in Brazil does not challenge an application filed by a third, and it issues to registration, the owner of the trademark registration will have gained exclusive rights to the mark and will be able to file a court action to stop the first company using the mark. The right of precedence does not extend to the courts and so it does not matter how long the defendant has been using a certain mark; if the plaintiff has a registration it has exclusive rights, which it may use to gain a preliminary injunction and or damages.

Absolute Grounds

When evaluating whether a mark is available for use in Brazil absolute grounds must also be considered. An assessment of absolute grounds should be included in every trademark search. The Brazilian PTO are very strict in their interpretation of what constitutes a descriptive or generic mark; or what they consider to be an advertising slogan. As such, local knowledge is essential. A trademark may be perfectly registrable in the United States or the United Kingdom, but may be rejected by the PTO as being descriptive or an advertising slogan.

As a rule of thumb, any sequence of words that make sense in English, Portuguese, or any recognizable language may be considered either descriptive or an advertising slogan by the PTO. If it is short sequence of words it may be considered descriptive; long sequences of words are more likely to be considered advertising slogans. The Brazilian PTO have issued many eyebrow-raising decisions that are difficult to overturn on appeal. With the correct advice in a search report such rejections may be avoided by simple techniques, such as filing the trademark in a composite form, or together with a house mark.

Along with descriptive or necessary words being unsuitable for trademark protection, the PTO will also reject design trademark applications for the necessary, common or usual form of a product or packaging, or a form that cannot be dissociated from a technical effect. As such a regular bottle with no distinguishing features or flourishes would be rejected. A trademark search would not necessarily reveal this, but companies should bear in mind that that a trademark application for an object that is protected by registration as an industrial design in the name of a third party would also be rejected.

Peculiarities in Brazil

Any trademark search in Brazil should also inform the client of any potential problems caused by some of the less common absolute grounds envisaged by Brazilian IP Law, and also of the Portuguese language.

Crests, flags, emblems, and monuments, as well as their respective names, may not be registered, when they are of an official or public character, whether they are Brazilian or international. As such not just Brazilian landmarks are protected, but also international ones, such as the statue of liberty. The following trademark was rejected on these grounds:

Similarly, acronyms for public entities may not be registered, unless applied for by the entity itself.

Isolated letters, numerals and dates, may not be registered, unless displayed in a sufficiently distinctive form. Nor can individual colors be registered, although combinations of different colors or a single color combined with a distinctive shape may be registered.

Expressions, or drawings that are contrary to public morality may not be registered in Brazil. Whereas drawings that offend public morality should not be difficult for foreigners to understand; nor profanities in English, profanities in Portuguese may be rather more difficult. May words that appear innocuous in English may be profane in Portuguese. MURDER may be a simple English word, but it is pronounced the same as MERDA, which is the Portuguese word for FECES. When determining registrability the context here is particularly important. Whereas DIAL M FOR MURDER would be registrable, but perhaps not QUE MURDER É ESSE?

Company names may not be registered, unless by the company itself. The PTO will not conduct searches of company names, but oppositions based on company names may be successful. While trademark searches do not themselves extend to company names, specific company name searches area available. These company names searches are not offered by all law firms because they must access company names on individual registries from Brazil's 26 states (and the Federal District).

Names, awards or symbols of official sporting, artistic, cultural, social, political events are also protected and may only be registered by the organizer of the event. The legal names, signature, family names and images of third parties are protected, and may not be registered without the consent of the owner, their heirs or successors in title. This can cause a problem where an individual starts a company or launches a product identified by their surname, and later sells or loses control of the company. The Brazilian PTO have demanded the consent of the person whose name is being used by the company as a trademark, even if they are no-longer involved in the company. Where the person does not give their consent, the applications for a mark incorporating their surname or signature may be rejected.

Similarly, the well-known pseudonyms or nicknames or collective artistic names, may not be registered, except by consent of the owners, their heirs or successors in title. Obvious examples here are THE BEATLES or PELE (which is the nickname of a rather famous Brazilian footballer).

As is the case in many other jurisdictions, geographical indications liable to cause confusion, or a sign that may falsely lead to a geographical indication, may not be registered. Also, any 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 is also likely to be rejected.

Copyright

The issue of copyright is very much a dual edged sword in Brazil, and may be a great advantage or a hindrance depending if the client is the owner of the copyright. Under Brazilian IP Law "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." No registration of copyright is necessary in Brazil. Trademark searches can show if a third party has registered a character name or fanciful place as a trademark, which is often the case when a book is made into a film. The company launching the film may be frustrated in its attempts to sign lucrative merchandising deals if a third party has already registered a character name or place from the original book. If the registration is over five years old not even a court action may be filed to annul the registration – unless there was clear bad faith in registering the trademark.

Conversely, the PTO will allow copyright as the basis for an opposition against an application or recently granted registration, irrespective of the copyright owner having filed a trademark application. Other benefits to using copyright as the basis to attack trademarks is that no registration or use is required, and it is not limited to a particular class or similar goods or services.

Classification

Another reason that it is important to employ a Brazilian attorney to consider the trademark search results is that of classification. Many of Brazil's registrations and even some applications still bear the former Brazilian Classification and so it is essential to conduct searches through a conduit which understands the correlation between the Brazilian Classification and the Nice International Classification which was introduced in 2000. There are four editions of the Nice Classification currently in force in Brazil: 7, 8, 9 and 10. The Brazilian Classification is quite different from the International Classification. For example, Brazilian Class 12 is similar to International Class 07. Also, much can depend on the Brazilian Subclass. Brazilian Class 09.55 identifies computers from International Class 09, but Brazilian Class 09.15 identifies medical equipment from International Class 10. The service classes can also be confusing. Brazilian Class 40.15 identifies retail services, which is the equivalent of International Class 35; yet Brazilian Class 40.34 identifies software development services found in International Class 42.

Summary

Brazil is a massive market, but it also has a massive Trademark Register. With over 150,000 applications filed each year, and there is a current backlog of 474,656 applications awaiting examination; and almost 100,000 new registrations are granted each year. The vast majority of which are filed by Brazilian companies and so will not be found on other trademark registers in other countries. This means search results from Brazil will often be very different than the results from other countries. The Brazilian register is a very busy place and the classification makes navigating it particularly complicated.

In the information age when news about new products and services travels around the world in a matter of minutes rather than months (POKEMON GO anyone?), trademark searches and filing programs are more important than ever.

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 Mondaq.com.

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

Authors
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
Tools
Print
Font Size:
Translation
Channels
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
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
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

Mondaq.com (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 www.mondaq.com

To Use Mondaq.com 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.

Disclaimer

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.

General

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