What is the primary legislation governing trademarks in your jurisdiction?
The Industrial Property Act (9,279/1996).
Which international trademark agreements has your jurisdiction signed?
- The Paris Convention for the Protection of Industrial Property (as revised at Stockholm), which was implemented in Brazil by Decree 1,263/1994); and
- the Agreement on Trade-Related Aspects of Intellectual Property Rights, which was implemented in Brazil by Decree 1,355/1994.
Which government bodies regulate trademark law?
The relevant authority is the Brazilian Patent and Trademark Office.
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.
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.
Removal from register
Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?
Non-use cancellation proceedings are available and may be commenced by any interested third party from the fifth year of the registration (counted from the publication of the grant decision). A non-use cancellation action will be dismissed where use of the mark has been evidenced or non-use has been justified in a previous proceeding filed less than five years after the request.
On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?
The invalidity proceeding may be initiated by any interested party – even by the Brazil Patent and Trademark Office (BPTO) ex officio based on the violation of any provisions of the Industrial Property Act. Most invalidation proceedings, though, are based on the violation of one or more items of Section 124 (both absolute and relative grounds for the invalidity of a registration) or Section 126 of the act (which protects well-known marks (Article 6bis of the Paris Convention)).
Who may file a request for revocation and what is the statute of limitations for filing a request?
Invalidation proceedings may be commenced by any interested third party or the BPTO ex officio.
What are the evidentiary and procedural requirements for revocation proceedings?
The law does not establish specific requirements for the filing of administrative nullity proceedings.
What is the appeal procedure for cancellations or revocations?
It is possible to appeal a cancellation decision issued on the grounds of non-use but no appeals are available for invalidation proceedings which are instituted by means of administrative nullity proceedings.
What is the procedure for surrendering a trademark registration?
The procedure for renouncing rights is very simple, with the presentation of a simple form requesting the homologation of the renouncement being sufficient. However, the legal representative must have specific powers to renounce rights over a trademark registration.
Which courts are empowered to hear trademark disputes?
Jurisdiction is decided by whether the Brazil Patent and Trademark Office (BPTO) is a defendant – as it is a federal entity, the federal courts have special jurisdiction to decide all court actions filed against it. Therefore, the federal courts are empowered to decide court actions concerning the nullity of registrations or the granting of rejected applications, as well as any other claims involving the BPTO. On the other hand, actions involving the enforcement of trademark rights (eg, infringement actions or declarations of non-infringement) must be filed at the state (district) courts. If a court action is filed with both purposes (eg, to cancel a trademark registration and to compel its owner to cease using the mark), it must be filed at a federal court.
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
The most common and effective measure is to file an infringement court action requesting a preliminary injunction order to cease the infringement immediately. The requirements and basic key features for the filing of the lawsuit are:
- a power of attorney;
- a copy of the trademark’s registration or pending application; and
- substantial evidence about the infringement (eg, samples of the infringed product or documents showing the unauthorised copy of a registered trademark).
Who can file a trademark infringement action?
The owner of a registration or pending application or a licensee authorised by the rights holder to enforce the trademark rights.
What is the statute of limitations for filing infringement actions?
Although there is some disagreement about this (some specialists argue that the term is five years from the start of the infringement or the date that the rights holder discovered it), there is a significant body of case law stating that if the trademark infringement is continuous, there is no statute of limitations for claiming that it must cease – only for demanding compensation of damages.
What is the usual timeframe for infringement actions?
Upon filing a lawsuit, the court will analyse whether the initial brief meets the formalities required by the Code of Civil Procedure (and, if so, decide on a request for preliminary injunction, if one has been made). After that, and provided that all the requirements have been duly met, the court will schedule a preliminary/conciliatory hearing and determine whether the defendant can be served with a summons. If a conciliatory hearing is concluded without the parties reaching a settlement, the defendant has 15 days in which to file a response to the lawsuit under penalty of the facts raised by the plaintiff being considered true. If a response is filed, the plaintiff must then file a rebuttal within 10 days. After this, the court will determine what evidence may be produced (including expert opinions), beginning the evidence phase. Once the evidence phase is completed, the case is ready to be tried. The term for such proceedings can vary greatly, depending on the complexity of the case and the speed of the court. A decision on the merits in an ordinary trademark infringement case may be expected between six months and two years on average.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
Both preliminary and final injunctions are available and may be requested and granted to halt infringement before, or concomitantly with, a decision on the merits. Where a preliminary injunction is requested, the plaintiff must demonstrate urgency and clear-cut evidence of infringement. Another requirement is the analysis of the hardship caused by the decision and the possibility of returning the parties to the status quo ante if the injunction proves unfair or unnecessary. Final injunctions, in turn, are generally granted when the court confirms a decision on the merits.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
A wide variety of remedies are available for trademark infringement in both civil and criminal spheres. In the civil sphere, the most common remedies include the following:
- search and seizure of products;
- damages (both moral and material recovery of damages);
- ex parte injunctions with the broadest possible scope (eg, change of trade dress, replacement of labels and withdrawal of websites); and
- monetary penalties for non-compliance with injunctions.
In the criminal sphere, it is possible to seek search and seizure orders, and the destruction of counterfeits, among other measures.
What customs enforcement measures are available to halt the import or export of infringing goods?
The following customs recordal methods are available to rights holders:
- The National Directory to Combat Trademark Counterfeiting – this is a database in which government officials can consult whom to contact whenever assistance in fighting IP infringements is required. The database also accepts the filing of documents and materials that can be accessed by public officials (eg, customs authorities, state police and the Inland Revenue Service) in order to correctly identify and seize unauthorised products.
- The Anti-Counterfeiting Manual – a database managed by the Centre of Coordination of Customs Affairs, which was developed to help customs officials. As with the National Directory, the applicant may input information on the firm or company in Brazil and a contact for whenever a shipment is retained, together with any documents that may assist customs officials in identifying and seizing unauthorised products or products imported by unauthorised parties. The main difference is that the directory is restricted to customs procedures.
- Requests for inspections – brands are entitled to address specific requests for inspections to ports and airports where counterfeit goods are likely to enter the country.
Customs seizure procedures If the customs authorities identify a shipment of counterfeit products, they will immediately notify the rights holder and invite it to examine existing samples in order to verify the source and then to make a formal statement confirming whether the goods are illegal. For this reason, it is important to determine who in an organisation is responsible for receiving customs notifications concerning possible illegal shipments. This representative can be anyone appointed by the rights holder. Upon submission of the affidavit, the customs authorities will send the rights holder a formal notification with additional information regarding the retention (eg, total number of goods seized and administrative procedure reference). Customs authorities may also ask the rights holder to file a court action requesting the definitive seizure and destruction of the infringing goods. Such procedures are based on the Agreement on Trade-Related Aspects of Intellectual Property Rights which sets out a timeframe of 10 working days after notification for the rights holder to file a court action to maintain the seizure of the goods as per a judicial order. This term may be extended once for another 10 working days. Although the customs rules require this court action for definitive seizure and destruction of the products, the absence of a standard procedure among the different Brazilian ports and airports means that rights holders can try to obtain the earlier destruction of the goods without the need to file a court action.
What defences are available to infringers?
The defendant may argue a wide variety of defences, including the following:
- The sign does not function as a trademark;
- The parties are non-competitors;
- Prior existing similar or identical marks are being used in the same market segment;
- The mark is not sufficiently distinctive and therefore the two marks should coexist;
- There has been continued use or prior use of the mark in good faith and without opposition from the title holder; and
- It has prior existing rights over the same sign.
Most importantly, and whenever applicable, the defendant must provide evidence that there is no risk of confusion and/or undue association between the marks.
Besides these possible defences, the Industrial Property Act establishes that a rights holder may not:
- prevent merchants or distributors from using its distinctive signs together with the mark that identifies the product, in their promotion and commercialisation;
- prevent manufacturers of accessories from using the trademark to indicate the destination of the products, provided that they follow fair competition practices;
- prevent free circulation of a product placed on the domestic market by the owner or by another party with the owner’s consent; or
- prevent reference to the trademark in a speech, scientific or literary work, or any other publication, provided that no commercial deception is intended and without detriment to the trademark’s distinctive character.
In all these cases, the use of the mark is legitimate and justifiable.
Procedural flaws may also be raised in addition to non-infringement arguments, as well as the arguable nullity of the mark (eg, where the trademark is evidently descriptive or does not function as a trademark).
What is the appeal procedure for infringement decisions?
The losing party may appeal to the relevant appellate court, submitting all factual and legal matters discussed in the decision. The decision rendered by the appellate court in its turn may also be appealed to the higher courts. However, at this stage only matters of law (where an appeal is filed to the Superior Court of Justice) or constitutional questions (where an appeal is filed to the Supreme Court) may be heard. Other secondary appeals may be filed throughout the prosecution of the case, but with a limited or specific scope.
Assignment and licensing
What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?
The recordal of a trademark assignment (application or registration) must be requested via a specific form, enclosing either a simple assignment document signed by the parties or their legal representatives, or the original assignment document or a simple copy thereof and a power of attorney executed by the assignee. Legalisation and notarisation are not mandatory for recordation purposes.
The assignment must include all registrations or applications that cover identical or similar trademarks covering identical, similar or related products or services, under the penalty of having the non-assigned registrations cancelled or the applications dismissed (Section 135 of the Industrial Property Act).
Assignments must be recorded in order to have legal effect among third parties.
What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?
Trademark licence agreements are recorded before the BPTO’s Contracts Division and therefore follow a different procedure from trademark assignment recordals, which are processed before the Trademark Division. For licence agreements, it is necessary to present a specific form enclosing either the original or a certified copy of the licence agreement, duly notarised and legalised before a Brazilian consulate.
Both non-exclusive and exclusive licences are eligible for recordal, as well as sub-licences. However, royalties may be paid only from the licence of a trademark registration.
A licensee may sue for infringement only if the licence agreement foresees its legitimacy for defending the mark before the courts and upon the recordal of the licence agreement before the BPTO.
What provisions are typically included in a licensing agreement (eg, quality control clauses)?
Typically, in addition to quality control matters, a licence agreement has provisions to address:
- the extent of the licence (how, when and where the licensed rights will be used);
- licensor’s rights over the licensed right;
- legal representation and defence of the licensed right, in the event of infringement;
- confidentiality; and
- required procedures after termination.
Can a security interest be registered over a trademark? If so, what rules and procedure apply?
A security interest may be created on a trademark security agreement to warrant the fulfilment of obligations maintained between the owner of the mark and the lender. To be effective, the BPTO must record the lien or limitation.
Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
To a certain and more limited extent it is indeed possible to protect signs that could be registered as trademarks as copyrights, industrial designs, commercial names and domain names.
Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
The registration of a domain name gives the owner the right to impede its use or to enforce the registration against third parties by initiating a Uniform Domain Name Dispute Resolution Policy proceeding (either before the Brazilian registrar or through one of the accredited arbitration centres, such as the World Intellectual Property Organisation). The protection afforded to a domain name is similar to that afforded to a company’s so-called ‘doing business as’ name, which is protected by unfair competition rules.