Trade and Service Marks

– Law No. 9.279, in force as from May 15, 1996.
– Patent Office Regulations in the form of the following Ordinances and Normative Acts: Resolutions No. 12/2013, 23/2013, 24/2013, 25/2013, 26/2013, 27/2013, 28/2013, 29/2013, 30/2013, 32/2013, 34/2013, 35/2013, 88/2013, 89/2013, 92/2013, 107/2013, 119/2013, 125/2013, 127/2014, 137/2014, 142/2014, 161/2016, 162/2016, 164/2016, 166/2016, 171/2016, 172/2016, 173/2016, 177/2017, 244/2019, 245/2019, 247/2019, 248/2019, 249/2019, 257/2020 and Normative Instructions No. 19/2013, 23/2013, 142/2014, 216/2015, 59/2016, 80/2017, 101/2019, PR 37/2021, CPAPD No. 2/2021, Opinion No. 00043/2021/CGPI/PFE-INPI/PGF/AGU.

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– Madrid Agreement for the Prevention of False Indications of Source, The Hague Act.
– Convention Establishing the World Intellectual Property Organization (WIPO), since March 20, 1975.
– WTO’s TRIPS Agreement, since January 1, 1995.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since August 14, 2016.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since October 2, 2019.

Filing

Who may register: marks can only be registered by persons subject to private law, for products or services related to their lawful activities, as well as by the nations, States, Territories, Municipalities, the Federal District and their administrative bodies.

Applicants not living in the country: must appoint a representative domiciled in Brazil. Power of attorney does not need to be notarized or legalized, but must contain powers to receive judicial summons. This document can be filed within sixty days from the application.

Types of marks: (1) product or service mark – that used to distinguish a product or service from one having a different origin that is identical, similar or akin; (2) certification mark – that used to attest that a product or service conforms with determined technical norms or specifications, notably with reference to its quality, its nature, the material used and the methodology employed; (3) collective mark – that used to identify products or services originated by members of a given entity. Besides the above, Brazil affords protection to famous marks – those which have special protection in all classes of products and services and well-known marks – those that are well-known in their field of activity in the terms of Article 6bis (1) of the Paris Convention.

Prior use may grant priority for the registration of the mark if it has been used in good faith at least six months before the filing date of the application.

Form of presentation of the marks: (1) word marks are represented by one or more words or are even composed of a combination of letters of the Portuguese alphabet, including K, W and Y and/or Roman or Arabic numerals; (2) design marks are represented exclusively by drawings, images, emblems, or any type of graphic signs not composed of characters of the Portuguese language, including K, W and Y, and/or Arabic or Roman numerals. The characters and numerals can be presented singly as design marks, provided they present sufficient stylization; (3) combined marks: those consisting of the combination of word elements and design elements or only word elements presented in a non-typewritten form; (4) position marks formed by the application of a signal in a singular and specific position of a given support, resulting in a set capable of identifying products or services and distinguishing them from identical, similar or similar products, provided that the application of the sign in the aforementioned position of the support can be dissociated from technical or functional effect.

Non-registrable marks: (1) crests, armorial bearings, medals, flags, emblems, official public distinctions and monuments, be they national, foreign or international, as well as any respective designations, figures or imitations; (2) an isolated letter, digit or date; (3) expressions, figures, drawings or any other sign contrary to morals and good customs or which offend a person’s honor or image or are an affront to the liberty of conscience, beliefs, religious cults or to ideas and sentiments worthy of respect and veneration; (4) designations or acronyms of a public entity or establishment, when registration is not requested by that public entity or establishment; (5) reproductions or imitations of a characteristic or differentiating element of a title of establishment or the name of an undertaking belonging to a third party, which are likely to cause confusion or association with such distinctive signs; (6) signs of a generic, necessary, common, usual or simply descriptive character, when related to the product or service to be distinguished, or those commonly used to designate a characteristic of the product or service with respect to its nature, nationality, weight, value, quality and moment of production or of giving a service, except when presented in a sufficiently distinctive manner; (7) signs or expressions used only as a means of advertising; (8) colors and their names, except when arranged or combined in an unusual and distinctive manner; (9) geographic indications, imitations thereof likely to cause confusion or signs that might falsely suggest a geographic indication; (10) signs that suggest a false indication with respect to origin, source, nature, quality or utility of the product or service to which the mark is directed; (11) reproductions or imitations of official seals, normally adopted for the guarantee of a standard of any type or nature; (12) reproductions or imitations of signs that have been registered as a collective or a certification mark by a third party, prior to the expiration of a period of five years counted from the extinction of the registration; (13) names, prizes or symbols of sporting, artistic, cultural, social, political, economic or technical official or officially recognized events, as well as imitations likely to cause confusion, except when authorized by the competent authority or entity promoting the event; (14) reproductions, or imitations of titles, bonds, coins and bank notes of the nations, the States, the Federal District, the Territories, the Municipalities or of any country; (15) personal names or signatures thereof, family or patronymic names and images of third parties, except with the consent of the owner, his heirs or his successors; (16) well-known pseudonyms or nicknames and singular or collective artistic names, except with the consent of the owner, his heirs or successors; (17) literary, artistic or scientific works, as well as titles protected by copyright and likely to cause confusion or association, except with the consent of the author or owner; (18) technical terms used in industry, science or art that is related to the product or service to be distinguished; (19) reproductions or imitations, in whole or in part, even with additions, of a mark registered by a third party, to distinguish or certify a product or service that is identical, similar or akin, and which are likely to cause confusion or association with the third party’s mark; (20) duplications of marks of a single proprietor for the same product or service, except when, in the case of marks of the same nature, they are presented in a sufficiently distinctive manner; (21) necessary, common or usual shapes of a product or of its packaging, or, furthermore, shapes that cannot be disassociated from a technical effect; (22) objects that are protected by industrial design registrations in the name of third parties; and (23) signs that imitate, wholly or in part, a mark of which the applicant could obviously not fail to have knowledge in view of his activity, and of which the proprietor is established or domiciled in the national territory or in a country with which Brazil maintains an agreement or guarantees reciprocity of treatment, if the mark is intended to distinguish a product or service that is identical, similar or akin, and is likely to cause confusion or association with such third party mark.

Foreign marks: the law considers a foreign mark to be a mark which has been filed regularly in a country having a treaty or convention with Brazil, guaranteeing reciprocity of rights for the registration of Brazilian marks and which is also filed in Brazil within the time limit of priority provided for in said convention. The document to substantiate the priority claim has to be filed with the Brazilian Patent and Trademark Office before the expiration of four months from the filing date in Brazil. The new law no longer requires submission of evidence that the applicant is engaged in the line of business related to the products or services to be covered by the application. The applicant must simply make a declaration of business in the filing papers.

House marks: no longer treated as a special category.

Classification: the National Classification system has been replaced by the International Classification of Goods and Services (11th Edition of the Nice Classification). An application can cover one class only and the specific products/services of interest must be indicated in the filing petition, using WIPO’s standard items.

Filing requirements for an application (to be sent to resident agent):
For trademarks, service marks, advertising signs or expressions:

1. Power of attorney, including powers to receive judicial summons issued by the courts; can be filed within sixty days from filing date of application (no legalization);
2. Priority certificate, certified by the Patent Office of the country of origin, but not legalized, whenever a Convention priority is claimed; may be filed within four months from filing date of application;
3. In case of design marks, 7 prints (size: 6 x 6 cm or 8 x 8 cm in case of e-filing);
4. In case of trademarks for veterinary and pharmaceutical products, the indication of the therapeutical application of the corresponding products.

For renewals:
1. Power of attorney, including powers to receive judicial summons issued by the courts; can be filed within sixty days from the filing date of the application for renewal (no legalization).

For a change of name or address:
1. A simple copy of an official document evidencing the change of name or address;
2. Power of attorney in the new name/address (no legalization).

Electronic filing and paperless prosecution: the Brazilian Patent and Trademark Office has introduced an electronic system for filing and general petitions relating to prosecution, grant and renewal of trademarks. At present, filings and other petitions on paper are still permitted.

Examination, Protection

Examination: once approved as having met formal requirements, the application will be published for oppositions within a period of sixty days and then, submitted to a technical examination. 

Disclaimers: not available.  

Letters of consent: are accepted, must be translated into Portuguese (no legalization).

Opposition: the applicant will be notified of the opposition and may respond within a period of sixty days. Once the period of opposition has passed or, if such has been filed, after the period for reply, examination will be conducted during which requirements may be formulated, which must be responded to within a period of sixty days. Once examination has been concluded, a decision will be issued, allowing or rejecting the application for registration.

Issuance fees: a certificate of registration will be granted (only in digital format) after the application has been allowed and payment of the corresponding fees have been proved. The payment of the fees and the respective proof thereof, must be effected within sixty days counted from allowance. The fees may still be paid and proved within thirty days after this period, by payment of a specific fee, to avoid unrecoverable abandonment of the application.

Duration of registration: ten years.

Renewals: the renewal for identical periods of protection has to be applied for during the last year of the protection term. Trademarks classified under the old national classification system are not presently subject to reclassification on renewal. Grace period: six months against payment of a supplementary fee.

Assignment: applications for registration and registrations may be assigned and the assignment must include all registrations or applications, in the name of the assignee, for identical or similar marks relating to a product or service that is identical, similar or akin, or risk cancellation of the registrations or shelving of the unassigned applications.

Nullification and Forfeiture after Registration

Forfeiture of registrations due to non-use: forfeiture may be declared upon a request of a third party if the use of the registered mark has not been commenced within five years from grant of registration, or is interrupted for over five consecutive years or if, within that time, the mark has been used in modified form that implies alteration in its original distinctive character, as found on the certificate of registration. The registration will not be subject to forfeiture if the registrant justifies the lack of use for legitimate reasons. Use of the mark must include products or services mentioned on the certificate, under penalty of partial forfeiture of the registration with respect to those products or services not similar or akin to those for which use of the mark has been proved.

Administrative nullification procedure: nullification of registrations may be commenced ex officio, or on request of any person with a legitimate interest, within 180 days counted from the date of issuance of the certificate of registration. According to Judicial precedents and Opinion 043/2021 from the Brazilian Trademark Office an administrative nullity procedure can be initiated based on the right of precedence to obtain a registration if the attacking party can prove good faith prior use of an identical or similar sign for identical or similar products or services for at least six months prior to the filing of the application being attacked. The registrant will be notified to respond within a period of sixty days. Once this period has passed and even if no response has been presented, the procedure will be decided by the President of the INPI, thereby terminating the administrative instance.

Nullification actions: the limitation for bringing an action for declaring the nullification of a registration is five years counted from the date of registration and must be brought before the Federal Courts of Justice, and the INPI, when not the plaintiff, will participate in the action. The period for reply by a defendant that is a registrant is sixty days and, once the decision is res judicata, the INPI will publish a notice to inform third parties. The Judge may, in the course of the proceedings, grant an injunction cancelling the registration and prohibiting the use of the mark.

Registered User

Use of a trademark or service mark may be licensed.

Recordal of the license: required in order for the license to become enforceable against third parties and generate fiscal effects such as permitting the deduction of payments as expenses and remittance of royalties overseas. Until 1992, the Patent Office took the position that recordal was also a condition for validation of evidence of use produced in the name of the licensee, but this practice has changed. To qualify for recordal, a license agreement must fulfill some minimum conditions, in particular the agreement must include: a full description of its subject matter (trademark application or registration number, date and class); whether it is exclusive or non-exclusive; whether sub-licensing is permitted; its term and the conditions for termination; and quality control requirements for the licensed products. Clauses held abusive under the Brazilian anti-trust law and those stipulating unjustifiable restrictions are not admitted.

Geographical Indications

Definition: a geographical indication is an indication of source or an appellation of origin.

An indication of source is defined as a geographical name of a country, city, region or locality of its territory, which has become known as a center of extraction, production or manufacture of a determined product or for providing a determined service.

An appellation of origin is defined as a geographical name of a country, city, region or locality of its territory, which designates a product or service, the qualities or characteristics of which are exclusively or essentially due to the geographical environment, including natural and human factors. When a geographical name becomes of common use with respect to a given product or service, it will not be considered as a geographical indication. The use of the geographical indication is restricted to the producers and providers of services established in the locality, quality requirements also having to be met in relation to appellations of origin. 

Registration: examination of applications for geographical indications is carried out by the BTO in accordance with Normative Instruction No. 25/2013. If all requirements are met by the applicant and provided that no obstacles are pointed out, the geographical indication will be granted without limitation in time.