Use the Lexology Navigator tool to compare the answers in this article with those from other jurisdictions.
Rights and protection
Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?
Brazil is a first-to-file country and trademark rights are acquired upon registration.
What legal protections are available to unregistered trademarks?
Registration gives the rights holder exclusive rights in the jurisdiction. However, anyone who has used a trademark in Brazil in good faith for more than six months before an earlier filed application acquires a right of precedence to registration. In addition, if the unregistered mark is internationally well known, as established by the Paris Convention, protection is also available based on an unfair competition claim.
How are rights in unregistered marks established?
There are no specific rules for establishing rights in unregistered marks, bearing in mind the two possibilities set out above. However, the owner of an unregistered mark would need to prove prior use in the country or the reputation of the mark abroad as well as in Brazil.
Are any special rights and protections afforded to owners of well-known and famous marks?
There are special provisions applicable to both well-known trademarks and highly renowned marks.
To what extent are foreign trademark registrations recognised in your jurisdiction?
Foreign registrations are not binding on the Brazilian Patent and Trademark Office (BPTO) in any manner.
What legal rights and protections are accorded to registered trademarks?
Registration confers the right to exclusive use of the mark, as well as the right to bring actions in cases of infringement.
Who may register trademarks?
In Brazil, a trademark may be owned under public or private law by natural persons and legal persons, including corporations, partnerships, joint ventures, unions, associations and any other entity capable of being represented in a court of law. For collective or certification marks, the application may be filed only by a legal person which either represents the collective or has no direct commercial or industrial interest in the certified products.
What marks are registrable (including any non-traditional marks)?
All visually perceptible distinctive signs are eligible for registration as trademarks, unless prohibited by law. The basic requirements are relative novelty, veracity and distinctiveness. As such, word, figurative, composite and three-dimensional forms are all registrable. However, non-traditional marks, such as musical jingles, sounds and colours cannot be registered in Brazil.
Can a mark acquire distinctiveness through use?
The BPTO is unwilling to allow the registration of trademarks which are not inherently distinctive. Despite this, secondary meaning is widely accepted by Brazilian courts, which have not only built a considerable body of case law confirming the possibility of a trademark acquiring distinctive character through use, but have also expressly recognised the applicability of Section 6quinquies of the Paris Convention.
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
The following are statutorily barred from registration under the Industrial Property Law:
- crests, armorial bearings, medals, flags, emblems, distinctions and monuments, as well as their respective names, representations or imitations, when they are of an official or public character, whether national, foreign or international;
- an isolated letter, numeral or date, unless displayed in a sufficiently distinctive form;
- an expression, representation, drawing or any other sign that is contrary to accepted principles of morality and good conduct or is offensive to a person’s honour or image, or is an affront to freedom of conscience, belief, religion or ideas and feelings worthy of respect and veneration;
- the designation or acronym of a public entity or agency, unless the registration has been applied for by the public entity or agency itself;
- the reproduction or imitation of a characteristic or distinguishing element of a third party’s title of establishment or company name, such that it is liable to cause confusion or an unfair association;
- generic, necessary, common, usual or simply descriptive signs, when these are related to the products or services they identify or those commonly used to indicate a characteristic of the products or services regarding their nature, nationality, weight, value, quality and time of production or rendering of a service, unless displayed in a sufficiently distinctive form;
- signs or expressions used merely as a means of advertising;
- colours and their names, unless displayed or combined in a unique and distinctive manner;
- a geographical indication or its imitation where this is liable to cause confusion, or a sign that may falsely suggest a geographical indication;
- a sign that suggests a false indication as to the origin, source, nature, quality or utility of the products or services for which the mark is intended;
- the reproduction or imitation of an official hallmark which is regularly used to guarantee a standard of any kind;
- the reproduction or imitation of a sign that has been registered as a collective or certification mark by a third party, with due regard to the provisions of Article 154;
- the name, award or symbol of an official or officially recognised sporting, artistic, cultural, social, political, economic or technical event, as well as an imitation liable to create confusion, unless this is authorsied by the competent authority or entity promoting the event;
- the reproduction or imitation of a title, policy, coin or paper currency of the union, states, federal district, territories or municipalities of any country;
- the legal name or corresponding signature, family name or patronymic or image of a third party, unless consent for this has been granted by the subject, his or her heirs, or his or her successors in title;
- well-known pseudonyms or nicknames and individual or collective artistic names, unless consent for this has been granted by the subject, his or her heirs, or his or her successors in title;
- literary, artistic or scientific works, as well as titles that are protected by copyright and are liable to cause confusion or association, unless consent for this has been granted by the author or owner;
- technical terms used in industry, science and the arts that are related to the products or services they identify;
- the reproduction or imitation, either wholly or in part, even with additions, of another person’s registered trademark to distinguish or certify identical, similar or related products or services where these are liable to cause confusion or association with the other person’s mark;
- more than one trademark in the name of a single owner for the same products or services, unless marks of the same nature have been displayed in a sufficiently distinctive form;
- the necessary, common or usual form of a product or packaging, where this form cannot be dissociated from the function;
- an object that is registered as an industrial design by a third party; and
- a sign that imitates or reproduces, either wholly or in part, a trademark of which the applicant could not be unaware, registered in the name of a person established or domiciled in Brazilian territory or in a country bound to Brazil by agreement or that assures reciprocity of treatment, if the mark is intended to identify identical, similar or related products or services where these are liable to cause confusion or association with the other person’s mark.
Are collective and certification marks registrable? If so, under what conditions?
Both collective and certification marks are recognised and registrable in Brazil.
In the case of collective marks, the application can be filed only by a legal person who represents the relevant trade association, which may engage in a different activity from that of its members and must set out regulations governing use of the mark.
In the case of certification marks, the application can be filed only by a person who has no direct commercial or industrial interest in the certified products or services. The application must contain:
- the characteristics of the products or services to be certified; and
- the control measures that the owner shall adopt.
Click here to view the full article.