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Filing and registration
Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
Power of attorney is indeed one of the minimum requirements and must be filed together with the trademark application or, upon payment of additional fees, within 60 days after filing.
In the case of foreign applicants, a power of attorney is required to empower representation both administratively and judicially, and in order to receive a service of summons.
Neither consular legalisation nor notarisation is required.
What information and documentation must be submitted in a trademark registration application?
In addition to the basic filing requirements, such as the trademark and the goods and services claimed, the applicant must provide the following information and documentation:
- priority documents, if applicable, as well as translations of these; and
- power of attorney.
Both the priority documents and the power of attorney may be filed later (four months and 60 days, respectively) if a supplemental deadline is requested when the application is filed.
What rules govern the representation of the mark in the application?
There are no rules for representing word marks, which must simply be typed in the application filing form.
For adequate graphical representation of composite and device marks, the applicant must indicate the applicable classes from the International Classification of Figurative Elements of a Mark.
With regard to three-dimensional marks, the applicant must to present an attachment with perspective views of the posterior, anterior, top, bottom and sides of the mark.
For applications claiming protection for colour schemes, an internationally recognised colour code is not required; the applicant must simply present prints (samples) of the trademark in colour.
Are multi-class applications allowed?
Multi-class applications are not allowed in Brazil. Accordingly, an individual application is required for each class of interest.
Is electronic filing available?
What are the application fees?
An average overall figure, not including representative fees, is approximately, $386.33, which is liable to fluctuation due to exchange rates. This includes:
- roughly $138.33 for filing the trademark application in one class (in electronic form, with free specification of goods/services); and
- roughly $248 for issuance fees and the first 10-year term of the registration, including the certificate of registration.
When considering representative fees, a reasonable budget for an application in one class is between $500 and $900.
How are priority rights claimed?
The claim to priority must be made at the time the application is filed and may be supplemented within 60 days by other priorities that precede the filing date in Brazil. The claim must be evidenced by means of a suitable document of origin, indicating the number, date and reproduction of the application or registration, and must be accompanied by an uncertified translation. Extracts taken from the database of the patent and trademark office of the country where the original application was filed are acceptable.
When not filed together with the application, the document evidencing priority must be submitted within four months of the filing date, under penalty of loss of priority.
In the event that priority has been obtained through assignment, the corresponding document must be submitted together with the priority document.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
Trademark searches are available and strongly recommended, but they are not mandatory. The searches are not conducted by the Brazilian Patent and Trademark Office (BPTO), but rather by individuals who access the BPTO’s database.
Searches allow potential rejection decisions to be identified on the basis of previously filed or registered marks or on the basis of absolute grounds, such as common meaning or descriptiveness. The criteria of analysis of the BPTO in rendering rejection decisions on absolute grounds are extremely restrictive – marks that are allowed in many other jurisdictions are often rejected in Brazil.
There are no official fees related to trademark searches and representative fees per mark and per class should be in the range of between $250 and $400.
What factors does the authority consider in its examination of the application?
The BPTO considers both relative as well as absolute grounds when analysing a trademark application.
Does the authority check for relative grounds for refusal (eg, through searches)?
Yes. A search performed by the BPTO on its own database is part of its examination process.
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
Some objections can be raised in official actions in which the applicant is allowed to rectify the application – for example, in relation to specification of products and services, or the exclusion of elements that characterise a sign as an advertising expression.
In these cases the BPTO raises an official action and the applicant has 60 days in which to comply with or contest it.
Can rejected applications be appealed? If so, what procedures apply?
Rejection decisions can be appealed to the BPTO’s Trademark Board of Appeals.
Once the notice of refusal of registration is published, the applicant has an unextendable 60-day period in which to file an appeal. The appeal will have the full effect of suspending the decision until the president of the BPTO decides to follow or disregard the opinion provided by the board.
The president’s decision cannot be appealed and will terminate the administrative phase.
Notwithstanding this, any decision by the BPTO is susceptible to revision by a Brazilian federal district court – thus not only is the decision to maintain the rejection of an application (rendered by the BPTO president) reversible through judicial proceedings, but so is a first-instance refusal. This means that applicants may decide whether to appeal a notice of refusal or take the matter directly to court.
When does a trademark registration formally come into effect?
A registration comes into effect once the grant decision has been published in the Official Bulletin.
What is the term of protection and how can a registration be renewed?
The registration term is 10 years from the grant decision; it is renewable for equal successive periods.
What registration fees apply?
The renewal application must be filed during the last year of the term of registration and must be accompanied by proof of payment of the respective official fee (approximately $355).
If the renewal application is not filed before the expiration of the term of registration, the applicant may do this within the following six months, upon payment of an additional fee (approximately $536).
When considering representative fees, a reasonable budget for one registration in one class is between $500 and $700.
What is the usual timeframe from filing to registration?
If no objections are raised, the registration process takes an average of three years from filing.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
Third parties can formally oppose an application in Brazil based on absolute or relative grounds, as well as on bad faith. Further, oppositions invoking special rights may be filed in exception to the general rules of the Industrial Property Act, such as:
- the principle of territoriality;
- the principle of specialty; and
- the principle of attributive trademark rights.
Oppositions based on marks being well known Ownership of a trademark is acquired by a valid registration, which grants the right to exclusive use throughout the Brazilian territory. As a rule, a prior trademark application or registration is required as the basis for an opposition. However, a trademark that is well known in its field of activity (pursuant to Section 126 of the Industrial Property Act and Section 6bis of the Paris Convention) enjoys special protection, irrespective of whether it has been previously filed for or registered in Brazil. As such, by submitting evidence of the trademark being well known in Brazil (and not just abroad), an opposition can be filed regardless of whether a prior application exists at the BPTO (an exception to the principle of territoriality). Despite this, a trademark application must still be filed within 60 days of the opposition.
Oppositions based on marks being highly renowned The right to the exclusive use of a trademark is limited to the goods or services covered by the registration. As a rule, a prior trademark application or registration can be used as the basis for an opposition to a mark intended to designate identical, similar or related goods or services. However, a trademark that is considered highly renowned will be assured special protection in all fields of activity (pursuant to Section 125 of the Industrial Property Act). As such, by obtaining highly renowned status (which must have been applied for previously through specific proceedings), an opposition can be filed against similar trademarks in any of the existing classes of products or services (an exception to the principle of specialty).
Oppositions based on prior fair use The priority in registration is based on the filing date of the trademark application or priority document. As a rule, Brazil uses the first-to-file system and prior use does not support a priority claim. However, any person who has used in good faith an identical or similar mark to distinguish or certify identical, similar or related products or services for at least six months in Brazil on the priority date or the filing date of the application shall enjoy a right of precedence in registration (pursuant to Section 129(1) of the Industrial Property Act). As such, an opposition against a more senior application is possible if based on prior use (an exception to the principle of attributive trademark rights).
What is the usual timeframe for opposition proceedings?
The timeframe for the analysis of an opposition is approximately four years.
Are opposition decisions subject to appeal? If so, what procedures apply?
If the opposition is sustained and the application is rejected, this decision will be subject to an appeal along the same lines as those described in the section on examination.
If, on the other hand, the opposition is rejected and the application is allowed, this decision cannot be appealed.
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