Brazil: The Trademarks Law Review – Brazil 2018 (segunda edição)

Last Updated: 11 December 2018
Article by Maurício Maleck

I OVERVIEW

In 2017, the Brazilian government announced its intention to join the international trademark system (the Madrid Protocol)2 by mid 2018. In August 2018, various representatives from government, industry, concerned associations and different sectors of society, and specialists all publicly debated the pros and cons of the issue, and especially ways of harmonising international rules with the local system, which has a few particularities and incompatibilities. This chapter aims to give an overview of the Brazilian trademark system and its flexibility in terms of protection and enforcement, and it lists some major adjustments required for Brazil to be ready to join the international registration system.

II LEGAL FRAMEWORK

i Legislation

The primary domestic legislation is the Industrial Property Law 19963 (the IP Law), which deals with civil and criminal aspects of trademarks, patents, geographical indications (GIs), patent designs, industrial designs and unfair competition practices.4

Brazil is a member of the Paris Convention, the TRIPS Agreement and the Nice Agreement,5 and, as stated above, intends to accede to the Madrid Protocol. The Brazilian National Institute of Industrial Property (INPI)6 is working hard to reduce its backlog.

The Brazilian Constitution includes a trademark clause in Paragraph XXIX of Article 5, which sets out the fundamental rights.7

ii Authorities

The INPI is responsible for registering trademarks and solving trademark disputes. It also maintains a register of licensing agreements on various intellectual property (IP) rights.

Article 124 of the IP Law lists 23 grounds for refusal (absolute and relative). Article 126, Section 2 gives the INPI powers to refuse signs that infringe well-known marks.8 As well as being able, ex officio, to refuse trademark applications on the basis of almost all these absolute and relative grounds (by conducting extensive searches within its trademark database irrespective of any opposition), the INPI has powers to initiate a revocation if a mark is mistakenly approved.

The INPI's powers to review and interfere in the language of registered licensing agreements were subject to criticism and, consequently, Normative Instruction No. 70 (NI No. 70)9 was issued, limiting the INPI assessments to formal requirements and ensuring that agreements are effective with respect to third parties. With effect from July 2017, therefore, NI No. 70 has required the INPI to take a more liberal approach, thus incentivising investments in Brazil.

iii Substantive law

The Brazilian trademark system protects signs capable of being visually perceptible, provided they distinguish the goods or services of one enterprise from the goods or services of other enterprises.

Despite having this visual requirement – which would, in principle, exclude non-conventional marks such as sounds and scents from trademark protection – the Brazilian legal system is flexible, permitting the registration of certain non-traditional marks, such as holograms, motions, gestural, position and three-dimensional marks.

To date, there are no soundmark registrations in Brazil because the INPI has taken the view that they are not allowable according to the IP Law. However, trademarks consisting of sounds, scents, colours per se can be safeguarded by unfair competition rules.

'Colours and their names, except when arranged or combined in an unusual and distinctive manner, are not registrable as trademarks.'10 Consequently, distinctive combinations of colours used as marks can be registered, for example Visa's registered mark for the combination of blue, white and gold.11

Some commentators argue that the 'visually perceptible' requisite should be understood as being similar to the European 'graphical-representation' requirement. This would potentially make room for non-traditional marks such as sounds or smells to be eligible for trademark protection in Brazil. But the system is currently not subject to the graphical-representation requirement. The IP Law would have to change and the INPI would have to update its manual of trademark practice.12

Footnotes

1 Mauricio Maleck Coutinho is a partner at Veirano Advogados.

2 The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.

3 Federal Law No. 9,279, of 14 May 1996, known as the Industrial Property Law.

4 Copyrights are governed by a separate piece of legislation – Federal Law No. 9,610 of 1998. Federal Law No. 9,609 of 1998 regulates software.

5 The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

6 The INPI, the official government body responsible for industrial property rights in Brazil, is an autonomous federal government agency of the Ministry of Industry, Foreign Trade and Services. Its services include registration of trademarks, industrial designs, geographical indications, software, patents, technology transfer and franchise agreements.

7 Constitution of the Federative Republic of Brazil. Title II: Fundamental Rights and Guarantees, Chapter I: Individual and Collective Rights and Duties, Article 5, Paragraph XXIX: 'the law will guarantee the property of marks and other distinctive signs, in view of the public and social interests and the economic and technological development of the country'.

8 Within the meaning of Article 6 bis (I) of the Paris Convention.

9 Normative Instruction No. 70, of 11 April 2017, on the approval of agreements.

10 Article 124, Paragraph VIII of the IP Law.

11 Registration No. 006088244, owned by Visa International Service Association.

12 Mauricio Maleck Coutinho, 'Sounding it out: A global view on registering sound trademarks – Part 2,' accessed on 3 October 2017 at www.thebrandprotectionblog.com/sounding-it-out-a-global-view-on-registering-sound-trademarks-part-2/.

To view the full article, please click here

Originally published in Law Business Research 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.

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