Registration of marks
As of 2 October 2019, when the international system came into force in Brazil, multi-class applications became acceptable. It can take up to one month for an application to be published.30 The filing fee is 355 reais. If there is no opposition, examination of the mark takes around six months.31 However, if the application is opposed, that time frame almost doubles.
Evidence of use should be submitted after the registration, to avoid revocations based on non-use. Use is not a prerequisite to registering a mark but is to keep it on the register. With the international system, the registrant must declare that the mark is being used in commerce for renewing registration.
A mark can be removed from the register if the registrant does not renew it for a further 10 years, expressly withdraws it from the register, or has the registration revoked or invalidated.i Inherent registrability
Marks can be fanciful, arbitrary, suggestive, descriptive and generic (Abercrombie’s levels of distinctiveness). ‘Suggestive’, ‘arbitrary’ and ‘fanciful’ are prima facie registrable terms as marks (inherently distinctive).
Generic terms are not registrable as marks. Descriptive signs have to acquire secondary meaning, so that it is possible for the public to recognise the sign as an origin identifier.
Shape marks can be registered only when they have a distinctive character. Examples are the get-up of packages that have acquired distinctiveness through use and advertising. These can function as source identifiers.
If a sign is formed by a descriptive component, it can be registered, but INPI will probably issue a disclaimer in respect of this descriptive element, stating that there would not be exclusive rights thereon.ii Prior rights
Brazil has a first-to-file system, and applications are examined in order, based on the filing date. (INPI uses international filing dates.) Priority is given only to elderly or disabled persons, by order of the courts, when the senior mark cited as anticipation is dead or belongs to the same economic group.
A person who has been using a mark in good faith for at least six months is eligible to claim prior rights in respect of a confusingly similar mark (preferential rights to registration) but has to apply to register such a mark.
The owner of a well-known mark that has been infringed, but for which no application has been made in Brazil, will have 60 days after lodging an opposition to file a Brazilian trademark application.iii Inter partes proceedings
The most commonly used relative grounds for refusal are ‘confusingly similar signs’ (in respect of another mark or a previous company name) and ‘dilutive marks’.
Opposition proceedings are conducted in writing only; there is no hearing at INPI. The applicant and the opponent will have only one opportunity each to submit their arguments and evidence. There is no fast-track procedure for opposition or mediation services provided by INPI. Time extensions are not allowed.
Usually, the opponent does not contact the applicant before lodging an opposition. Sometimes, cease-and-desist letters are effective. Costs are not recovered or paid to the winner of the opposition.
INPI compares the marks as a whole and not their differences. It applies tests for likelihood of confusion resembling the Polaroid test. INPI and the courts try to assess as many factual aspects as possible. Some courts apply a test created as part of a legal study, known as ‘the 360° Test’.
Oppositions must be filed within 60 working days of the publication date. The applicant is then given the option of submitting counterarguments. After that, a decision is given, which can be appealed. Any oppositions lodged after the 60 days are disregarded.
INPI sometimes freezes a junior application – irrespective of opposition – to avoid conflicting decisions; that is to say, where there are two confusingly similar marks owned and registered by different persons.
If it is not used within five years of registration, the mark can be vulnerable to revocation. INPI or anyone with a legitimate interest can start this proceeding. The registrant will have to prove substantial use of the mark during the previous five years to retain registration of the mark or a legitimate reason for not using the mark.iv Appeals
The most common appeals relate to refusals, registrations, revocation in respect of non-use, and disclaimers (usually in view of lack of distinctiveness).
An act of grant can be appealed irrespective of any previous opposition.
Appeals proceedings are in writing only (no hearings). The Official Bulletin notifies the owner to file its counterarguments. There is no fast-track procedure and no mediation services offered by INPI. The appeals are addressed to INPI’s presidency. No costs are reimbursed or awarded to the winner of the appeal.
INPI can contact a party to clarify a specific point or to obtain better proof of a fact. This collaborative work optimises the system and allows better decisions to be reached.
The act of lodging an appeal does not suspend the effects of the INPI decision that is challenged. INPI’s decision on appeal is the final administrative step; therefore, that decision can only be reversed before the courts.