Trademark registration in Brazil. Brazil, officially the Federative Republic of Brazil, is the largest country in both South America and Latin America. Brazil is one of the world’s most multicultural and ethnically diverse nations, due to over a century of mass immigration from around the world. Therefore, many businesses want to expand their company’s activities to Brazil and one of the most important steps to do it is to have a trademark registration in Brazil.
Trademark categories in Brazil
Trademark registration in Brazil is achieved through the Brazil Intellectual Property Office (“INPI”), affiliated and sponsored by the Brazilian Ministry of Development, Industry, and Foreign Trade.
Trademark categories in Brazil are divided into the following classes:
- Word-only mark: The marks consisting only of words, letters, or numbers without special fonts or any graphic design details.
- Visual mark: The marks shown in the form of a design image without any alphanumeric elements (alphabets or numbers).
- Combined mark: The marks that combine both text and graphics. The text can be stylized or not. If the mark has only text and the text is presented in a stylized form or a special font, the mark is also considered a combined mark.
- Three-dimensional mark: The marks that represent the shape or image of a product. These marks are almost always the packaging or container of the product that distinguishes it from other products.
Note: Other types of trademarks can be found in commerce, such as scent marks or sound marks. However, these types of marks are not yet agreed to be protected by INPI. The only way to protect these marks in Brazil is through legal action based on unfair competition.
Necessary documents for trademark registration in Brazil
When filing a trademark application, the applicant will need to prepare the following necessary documents for trademark registration in Brazil:
- Name and address of the applicant.
- Trademark models.
- Priority notarized documents (if any).
- List of products/services.
- Power of attorney if applying through a representative.
- Other relevant documents.
- Proof of payment of fees.
When filing a trademark application in Brazil, businesses need to prepare comprehensive and accurate documents in order to have a smooth registration process.
Optional procedure before filing a trademark registration in Brazil
In addition to the documents that businesses need to prepare above, one of the optional but extremely necessary procedures is to conduct a trademark search before filing an application in Brazil.
Obviously, trademark search is not obliged but is necessary, especially for businesses and individuals that have international trade relationships or have high competition in the market.
Performing a trademark search will have results after 10 to 12 days. This result will help businesses assess how much the protection ability of the mark intends to register is. The trademark search will help businesses reduce risks and save time and effort when registering trademarks in Brazil.
Important notes in trademark registration in Brazil
Enterprises can conduct trademark registration through an intellectual property representative so that the exclusive protection can be more effective and successful. When applying for trademark registration, there are many important notes businesses need to understand, include:
- The selection of a registered profession:
- The choice of business lines to register for protection is very important and decisive to the scope of protection and the future development of the business.
- According to current law, once a trademark has been registered, the application owner is not allowed to add more lines of business/products and services but must submit a new dossier with the new filing date.
- Trademark registration notes:
- The term of protection of a trademark is 10 years from the date of registration and can be renewed many subsequent times, each time 10 years.
- An application for renewal of trademark protection can be filed within 1 year before the expiration date or 6 months from the expiration date. If a renewal application is not filed within the above time limit, the registered trademark will be invalidated.
- If a trademark has been successfully registered but has not been used for 5 consecutive years, any third party has the right to request the invalidation of that mark.
Filing a trademark application in Brazil
The fact that Brazil joins the Madrid Protocol on October 2, 2019, is an opportunity for individuals or businesses to protect their trademark in the Brazilian market in one of two ways:
- Filing a national application traditionally.
- Filing an international application for a Brazilian designation mark by country code BR.
Note: Brazil has declared to send WIPO a separate fee (individual fee) at CHF 293/brand/class, but the first request is CHF 105 and the second request when the trademark is approved for protection is CHF 188.
National registration
The trademark registration process in Brazil through the filing of a national application can be summed up as follows:
- An application filed with the National Industrial Property Office (Instituto Nacional da Propriedade Industrial – INPI) must include 4 main information:
- The applicant’s information (natural or legal entity).
- Label sample trademark claim.
- A list of products and services with groups according to the Nice classification.
- A signed Power of attorney (POA).
- INPI will examine the submitted trademark in both form and content, if it is satisfied, it will allow the trademark to be published in the industrial property gazette for 3rd party objection within 60 days.
- At the end of the objection period, if there is no objection from a third party, INPI will issue a certificate of trademark registration valid for 10 years from the date of issue.
- However, it should be noted that the examination of applications in Brazil is very slow. Even if the application is not impeded, the examination period can last for 3-4 years.
International registration
Legal issues that need special attention when filing an international application in Brazil are:
- The time limit for temporary refusal for an international application to designate Brazil is 18 months, or more than 18 months if there is a third-party objection.
- International registrations designating and International protection in other member countries before 2 October 2019 – the date on which the Madrid Protocol entered into force for Brazil will not be able to be used for territorial expansion into Brazil.
- Brazil does not accept registration of the right to use (Compulsory license) trademarks through the Madrid system but requires the involved parties to carry out this procedure at INPI in compliance with the requirements of form and conditions according to the laws of Brazil
- Brazil does not accept separation or consolidation of international trademark applications because there is no such provision under national law
- Like Japan and Cuba, Brazil separates its fees into two parts. The first requiring the payment of the Government fee at the time of the international application or subsequent appointment. The second is when Brazil sends notice to the International Bureau of WIPO declaring protection and requesting payment of fees.
- Accepted application language: English or Spanish
- The applicant can apply for protection of all kinds of trademarks in Brazil including three-dimensional trademarks. Brazil does not accept the protection of non-traditional trademarks such as scent marks, sound marks, and monochromatic marks (only one color).
- For collective marks and certification marks, the applicant needs to provide the rules for using the collective mark or certification mark in the language of the country of origin with a Portuguese translation within 60 days of the date INPI issued the provisional disclaimer notice; the entity authorized to use the collective mark and the conditions for obtaining such permission; the consequences of improper use of the mark including fines; the rights and responsibilities of the trademark owner to the subject of improper use of the mark.
- Regarding the classification of goods and services: Brazil accepts the Nice classification (version 11) and can also accept the general description of each group (heading class) as long as they are not too broad and vague.
- The applicant must declare that his or her business is legal as directed in forms MM2, MM4, and MM5 in footnotes 8, 9, and 2 respectively.
- Examination and provisional refusal: Brazil examines marks on both absolute and relative refusal grounds within 18 months of the date of recording by WIPO. In case an international trademark is temporarily denied, the international applicant must hire a local lawyer to respond on behalf of the applicant within 2 months.
- Objection to an international application: INPI will re-publish the international registration on its website within 60 days for objection by a third party. Any third party has the right to file an objection within the above 60-day period.
- Examination of the application by INPI and the filing of an objection are parallel, that is, regardless of whether or not there is an objection by a third party or an objection by a third party to which the trademark owner does not respond, INPI will still examine before issuing a notice of provisional denial based on an objection or notice of a provisional denial or a claim of protection.
- Both objections and the response to those objections must be made in Portuguese. Moreover, the government fees must be paid and both applications must be represented by a local attorney who has practiced in INPI if the owner of an internationally registered mark has a foreign nationality.
You can see a list of Brazil IP firms here.