1 Legal framework
1.1 What is the statutory or other source of trademark rights?
The sources of trademark rights in Brazil are:
- the Federal Constitution (Section 5, Item XXIX); and
- the Federal Industrial Property Law (9.279/96).
Section 5 of the Brazilian Constitution is an unchangeable provision. The heading of this section states, among other things, that the right to property is guaranteed to both Brazilians and foreigners. Item XXIX clearly states that the law will grant protection to trademarks, considering the social interest and the economic and technological development of Brazil.
1.2 How do trademark rights arise (ie, through use or registration)?
Trademark rights normally arise through registration on a first come, first served basis, but there is an exception for good-faith prior user. According to the first paragraph of Section 129 of the Industrial Property Law, anyone that used a trademark in good faith for at least six months before a third party filed an application for an identical or similar trademark to identify identical or similar products or services has the right to claim a trademark based on prior use.
1.3 What is the statutory or other source of the trademark registration scheme?
The Industrial Property Law and the Trademarks Manual issued by the Brazilian Patent and Trademark Office (Resolution INPI/PR 249/2019), which had its second revision on July 2020.
2 What constitutes a trademark?
2.1 What types of designations or other identifiers may serve as trademarks under the law?
A trademark is a visually perceptible distinctive sign capable of identifying and distinguishing similar products or services of different origin. Trademarks are normally composed of letters, words, names, acronyms, numbers, devices, symbols, colour combinations and three-dimensional forms; combinations thereof can also be registered.
It is also possible to register collective and certification marks. Collective marks are used to identify the products or services of members of a given entity, while certification marks are used to attest to the conformity of a product or service with certain standards or technical specifications – notably with regard to quality, nature, material used and methodology used.
2.2 What are the requirements for a designation or other identifier to function as a trademark?
In addition to being visually perceptible and not prohibited by law, a designation or other identifier must be sufficiently distinctive.
2.3 What types of designations or other identifiers are ineligible to function as trademarks?
- A single colour, although a combination of colours can function as a trademark if it is peculiar and distinctive;
- Geographical indications (there is a specific procedure for their registration);
- Family names, signatures, pseudonyms, well-known nicknames and artistic names (whether solo or of a group), with the authorisation of the owner or the rightful heirs or successors; and
- An object protected by a third-party industrial design. This means that it is possible to obtain dual protection for a single object, such as an industrial design and a 3D trademark.
Only visual perceptible signs are registrable as trademarks. Therefore, non-traditional trademarks – such as, scent, sound, movement, texture and taste marks – are not subject to trademark registration in Brazil. However, they can be protected against unfair competition, as per Section 195 of the Brazilian Industrial Property Law.
3 Registration procedure
3.1 Which governing body (ie, trademark office) controls the registration process?
The Brazilian Patent and Trademark Office (BPTO) controls the registration process in Brazil.
3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?
During the prosecution of a trademark application, two official fees are charged by the BPTO:
- at the filing of the application; and
- after allowance of the application, for grant of registration and issuance of the corresponding certificate.
There are two different official fees for the filing of a trademark:
- The applicant chooses to use the pre-approved description of products and services; or
- The applicant is free to describe the relevant goods or services as it sees fit.
Other additional official fees that may be incurred during the prosecution of a trademark application relate to the following potential activities:
- compliance with an office action;
- late presentation of documents;
- additional priority request;
- filing or replying to an opposition;
- filing an appeal against rejection;
- filing or replying to a cancellation action; and
The official fees are discounted by 60% where the applicant falls within one of the following categories:
- natural persons;
- teaching and research institutions;
- non-governmental organisations; and
- public bodies.
Brazilian micro and small companies and cooperatives also benefit from this discount, as they must abide by local laws to be considered as such.
3.3 Does the trademark office use the Nice Classification scheme?
3.4 Are ‘class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?
The applicant must identify the specific goods or services for which the mark will be used. This can be done using a pre-set list prepared by the BPTO; alternatively the applicant can draft its own list of goods and services for an extra charge.
3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?
The bona fide intention to use a mark is inferred at the time of filling. According to the first paragraph of Section 128 of the Industrial Property Law, trademark applications can be filed only in regard to activities that are effectively and lawfully conducted by the applicant. After the grant of registration, the owner has a five-year period to start using the mark, under penalty of the registration being subject to cancellation due to non-use.
3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?
3.7 What types of examinations does the trademark office perform other than relative examination?
The BPTO performs formal examinations as soon as the application is filed, to ensure that the official fees have been duly paid. After the expiration of the deadline to present and reply to oppositions, a substantive examination is performed, including searches for earlier conflicting marks and analysis of other relative grounds for refusal.
3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?
Yes, Section 124 of the Industrial Property Law lists the signs that are ineligible for registration. In addition to the grounds listed in question 2.3, the main grounds include the following:
- signs that violate morals, offend people's honour or image, or violate someone's freedom of conscience, belief, religious cult or idea and feeling worthy of respect and veneration;
- signs that suggest a false indication as to the origin, source, nature, quality or usefulness of the goods or services;
- signs that represent the necessary, common or common shape of the goods or their packaging, or which cannot be dissociated from a technical effect;
- reproductions or imitations of the distinctive element(s) of a third party's trade name that may cause confusion or association by consumers;
- reproductions or imitations of collective or certification trademarks;
- reproductions or imitations of earlier trademarks that the applicant evidently could not have been unaware of due to its activity, if the mark will be used to distinguish identical or similar products or services and may cause confusion or association by consumers; and
- single letters, numbers or dates, unless they are sufficiently distinctive.
3.9 Is there a separate or supplemental register on which descriptive marks may be registered?
No. In Brazil, there is only one trademark register, which is maintained by the BPTO, and descriptive marks cannot be registered as per Section 124, Item VI of the Industrial Property Law.
3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?
No measures can be taken by any third party between filing and publication of the application.
3.11 Must the applicant use the trademark commercially in order to obtain a registration?
No. According to Section 143, Item 1 of the Industrial Property Law, the trademark owner must start using the mark within five years of grant of registration; otherwise, it becomes vulnerable to a potential administrative cancellation action for non-use.
3.12 How much time does it typically take from filing an application to the first office action?
If the prosecution runs smoothly, no office actions will be issued.
3.13 How much time does it typically take from filing an application to publication?
It usually takes between one and two months from filing to publication, and between six and eight months for a registration to be granted, provided that no opposition is filed. If an opposition is filed, the process may take a couple of years.
4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?
Yes, an administrative appeal can be filed against the rejection of an application, as per Section 212 of the Industrial Property Law. The appeal will be analysed by the president of the Brazilian Patent and Trademark Office (BPTO).
4.2 What is the procedure for appealing a trademark office refusal?
To file an appeal, the applicant need only pay the official fees and present a brief with its arguments.
4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?
The appeal decision can be reviewed only by the Federal Court. In this case, the applicant must file a lawsuit before the Federal Court, in which the BPTO will be the defendant. If the application was rejected based on the existence of a senior mark, the court may request that the owner of the senior mark be included as a co-defendant in the lawsuit, even if it did not file an opposition against the rejected application.
5.1 Can a third party oppose a trademark application?
5.2 Who has standing to oppose a trademark application?
Any third party with a legitimate interest.
5.3 What is the timeframe for opposing a trademark application?
The timeframe to file an opposition is 60 days from publication of the application.
5.4 Which body hears oppositions?
The opposition is decided by one examiner.
5.5 What is the process by which an opposition proceeds?
An interested third party may file an opposition. Once the opposition is published, the applicant has a 60-day deadline to submit its response. Thereafter, the files will be sent to an examiner, who will analyse the briefs. If the applicant does not submit a response to the opposition this does not mean that all of the arguments set out in the opposition will be considered to be true.
5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?
If the opposition results in the rejection of the application, the applicant can file an administrative appeal against the rejection. If the application is allowed, once registration has been granted, the opposing party will have the opportunity to file an administrative cancellation action or a lawsuit.
6 Rights of registered and unregistered marks
6.1 What, if any, protection is afforded to unregistered trademarks?
Unregistered marks are protected against acts of unfair competition. Also, a bona fide prior user can obtain protection for its marks (please see question 1.2). Registration allows the trademark owner to take measures to protect its integrity and reputation.
6.2 What legal rights are conferred by a trademark registration?
Registered marks are conferred exclusive rights throughout the entire Brazilian territory for a 10-year period, which can be indefinitely renewed for successive 10-year periods.
6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?
7 Enforcement and remedies for trademark infringement
7.1 What remedies are available against trademark infringement?
The remedies available against trademark infringement are:
- sending a cease and desist letter; and
- filing a lawsuit before the State Court.
7.2 What remedies are available against trademark dilution?
If a mark is so famous that its use by a third party would lessen its uniqueness, the owner should seek recognition of its highly reputed status, in order to obtain rights against trademark dilution. Such recognition is obtained through an administrative procedure before the Brazilian Patent and Trademark Office and, if granted, guarantees protection of the mark in all classes.
If the mark is not so famous as to deserve protection in all classes, and the owner wants to protect it against unauthorised use on products or services that do not compete with, it is always possible to send a cease and desist notice and/or file suit based on parasitic exploitation. However, the concept of parasitic exploitation was developed by scholars and the likelihood of success will greatly depend on the evidence that the plaintiff can provide.
7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?
Yes, unfair competition and the possibility of cancelling a registration obtained in bad faith.
7.4 What is the procedure for pursuing claims for trademark infringement?
Filing a civil lawsuit before the state court or sending a cease and desist letter.
7.5 What typical defences are available to a defendant in trademark litigation?
The most common defences are as follows:
- where the marks in conflict are not identical or are targeted at different types of consumers, an argument that there is no possibility of confusion;
- a request for cancellation of the registration based on non-use;
- an argument that the defendant's trade name encompasses the mark and was registered before the plaintiff filed its application; and
- the coexistence of several similar trademarks that identify the same or similar goods or services.
7.6 What is the procedure for appealing a decision in trademark litigation?
Filing an appeal before the Court of Appeals. If the decision is still negative, a special appeal can be filed before the Superior Court of Justice regarding federal law matters; or an extraordinary appeal can be filed before the Supreme Federal Court regarding constitutional matters.
8 Maintenance and removal of registrations
8.1 What is the length of the initial term of registration and what is the length of renewal terms?
Registration is granted for a 10-year period and can be renewed for further consecutive 10-year periods.
8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?
The trademark owner need only pay the renewal fee in order to maintain or renew a registration; there is no need to present any additional documentation.
8.3 What are the grounds for cancelling a trademark registration?
- Violation of the Industrial Property Law;
- Non-use; and
- Bad faith.
8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?
- violation of the prohibitions set out in the Industrial Property Law; and
- non-payment of the renewal fees.
8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?
Violation of the prohibitions set out in the Industrial Property Law: Any interested third party can file:
- an administrative nullity procedure within 180 days of grant of registration; or
- a cancellation lawsuit within five years of grant of registration.
Non-use: Once five years have elapsed following grant of registration, any interested third parties can file an administrative nullity procedure.
Bad faith: Once five years have elapsed following the grant of registration, bad faith is the only basis to seek cancellation of a registration by means of a lawsuit.
8.6 What is the procedure for appealing a decision cancelling a registration?
The only procedure available is the filing of a civil lawsuit before the Federal Court.
9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?
9.2 Must trademark licences be recorded with the trademark office or other governing body?
The licence must be recorded in order to have effect against third parties or if royalties will be remitted from Brazil to another country.
If the owner needs to record the agreement with the Brazilian Patent and Trademark Office, the official number of the application/registration must be included in the agreement; and where the licensee is a foreign company, the signature of its representative must be notarised and apostilled.
9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?
10 Protection of foreign trademarks
10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?
If the foreign mark is famous in its field of activity, its owner can enforce it in Brazil under Section 6bis of the Paris Convention and Section 126 of the Industrial Property Law. However, in order to be able to assert such protection, an application for the mark must be filed in Brazil at the same time.
10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?
Yes – not only Madrid, but also priority under the Paris Convention as per Section 127 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.