Registration and useOwnership of marks
Who may apply for registration?
The BIPL states that natural or legal persons who are subject either to public law or private law may apply for the registration of a mark.
Business entities subject to private law may only apply for the registration of a mark covering activities that such persons effectively and lawfully exercise either directly or through companies that they directly or indirectly control. The products or services covered in the filing petition must fall within the scope of such activities.
Likewise, natural persons may only apply for registration of a mark covering their professional activities.Scope of trademark
What may and may not be protected and registered as a trademark?
The BIPL establishes that any distinctive, visually perceptible sign may be registered as a trademark, provided it does not fall within the prohibitions arising under Brazilian law. The BIPL also allows the registration of collective and certification marks.
The requisite of a visual representation excludes from the scope of protection non-traditional trademarks, such as olfactory, sound and gustatory marks. On the other hand, the protection of three-dimensional signs - which are considered non-traditional trademarks - has been admitted in Brazil since the enactment of the BIPL in 1996.
The BIPL sets out, in article 124, a list of signs that are not registrable as trademarks. The list includes:
- signs of a generic, necessary, common, usual or merely descriptive character, when related to the product or service to be distinguished, or those commonly used to designate a characteristic of the product or service with respect to its nature, nationality, weight, value, quality and moment of production of a product or provision of a service, except when the sign is presented in a sufficiently distinctive manner;
- signs or expressions used only as a means of advertising;
- colours and their names, except when arranged or combined in an unusual and distinctive manner; and
- names, prizes or symbols of sporting, artistic, cultural, social, political, economic or technical official or officially recognised events, as well as imitations likely to cause confusion, except when authorised by the competent authority or entity promoting the event.
Can trademark rights be established without registration?
The BIPL states that the ownership of a mark is acquired by means of a validly granted registration, following which the titleholder has an established right to exclusive use of the trademark throughout the national territory.
However, the BIPL also provides protection for the owners of trademarks that have not yet been registered with the BPTO.
An example is the right of preference, which establishes that any person who, in good faith, at the date of priority or the filing date of the application, has been using an identical or similar mark for at least six months in the country, to distinguish or certify a product or service that is identical, similar or akin to, is entitled to the right of preference to registration.
Another example is trademarks that are well-known in their field of activity, as per article 6bis(1) of the Paris Convention. Well-known trademarks are given special protection, independently of whether they have been previously filed or registered in Brazil. The BPTO has powers to reject ex officio a trademark application that wholly or partially reproduces or imitates a well-known trademark. On the other hand, in the event of the owner of a well-known trademark filing an opposition or an administrative nullity action based on its well-known trademark, it has a period of 60 days commencing with the filing of the opposition or administrative nullity action in which to file an application for the registration in Brazil of its well-known mark.
The BIPL also establishes that signs that imitate or reproduce, wholly or in part, a third-party mark of which the applicant could not be unaware due to the commercial activity in which he or she engages, are not registrable as trademarks, if the sign is intended to distinguish a product or service that is identical, similar or akin to that covered by the existing mark and is likely to cause confusion or association with such a third-party mark. As a consequence, the BIPL enables the owner of a trademark that has not yet been filed or registered in Brazil to challenge third parties who attempt to register similar or identical trademarks. Similarly, to the situation mentioned above, the owner of the trademark has a 60-day term in which to file an application for registration of his or her mark in Brazil, with said period commencing upon the date they filed the opposition or administrative nullity action.Famous foreign trademarks
Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?
No. Brazilian laws and regulations do not offer special protection to famous foreign trademarks if not registered and in use in Brazil. For a trademark to be afforded the special protection in all fields of activities, as foreseen in article 125, of the BIPL, the BPTO must recognise its famous status.
To be able to request the recognition of famous status before the BPTO, the owner of the trademark must have a local registration and, according to article 3 of Resolution No. 107/2013, demonstrate the famous status by providing evidence of three requirements:
- recognition of the trademark by a large portion of the general public;
- quality, reputation and prestige associated by the public to the trademark and the goods or services it identifies; and
- degree of distinctiveness and uniqueness of the mark in question.
The BPTO allows any type of evidence to demonstrate that the trademark fulfils the three requirements above, but the Resolution No. 107/2013 brings suggestions of evidence to be presented, such as a market survey with national scope, a brand recognition survey with national scope, copies of judicial actions that involved the mark, in particular regarding dilution and unauthorised use, and any other document the trademark holder finds relevant to demonstrate the image and recognition of the mark in Brazil.
On the other hand, in accordance with article 6bis(1), of the Paris Convention, well-known trademarks in their field of activity are given special protection, independently of whether they have been previously filed or registered in Brazil. The BPTO has powers to reject ex officio a trademark application that wholly or partially reproduces or imitates a well-known trademark. Furthermore, if the owner of a well-known trademark files an opposition or an administrative nullity action based on its well-known trademark, it has a period of 60 days, starting on the date of the filing of the opposition or administrative nullity action, to file an application for the registration of such mark in Brazil.The benefits of registration
What are the benefits of registration?
Brazil adopts an attributive system of trademark protection rather than a declarative one. The ownership of a mark is therefore acquired by means of a validly granted registration, following which the titleholder has an established right to exclusive use of the trademark throughout the national territory and consequently to prevent third parties from using an identical or similar mark to designate the same or akin goods or services.Filing procedure and documentation
What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?
The required documents for the purpose of filing trademark applications in Brazil are a Power of Attorney and, in case of priority claim, a copy of the priority document, comprising all of the goods and services to be filed in Brazil.
The rules established in the BIPL governs the representation of the mark in the application (ie, any distinctive, visually perceptible sign may be registered as a trademark in Brazil).
Electronic filing is available. Trademark searches are available, but are not compulsory.
As for the procedure and fees; in case the applicant is domiciled in Brazil, it can file the trademark application before the BPTO itself. In case the applicant is domiciled abroad, it must constitute a legal representative in Brazil to file the trademark application, by means of a power of attorney. After paying the official fee of 415,00 reais (a discounted fee of 166,00 reais is offered to natural persons, if they are not partners on companies inserted in the same field of the goods or services covered by the trademark application, small businesses, sole proprietorships, cooperatives, educational and research institutions, non-profit entities, and public agencies, when referring to their own acts), the applicant must enroll with the BPTO’s electronic system and then complete the application form with the information of the trademark application.Registration time frame and cost
How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?
Two-and-a-half years is the estimated time frame from the filing until the grant of registration of a trademark, in the case of ‘smooth’ prosecution (free of obstacles such as official actions, opposition and rejection).
Usually, the legal fees for obtaining a trademark registration are charged on a fixed-fee basis. Some attorneys, however, charge for prosecuting a trademark application on an hourly rate rather than a fixed-fee basis. The registration of a trademark come into effect with the publication of the granting decision by the BPTO In the Official Gazette.
The following circumstances may cause deviations from the average time for final registration and, therefore, increase the estimated time and cost of a trademark prosecution:
- opposition filed by third parties;
- official actions by the BPTO in which an applicant is required to present clarification or supplementary documentation;
- rejection of the trademark application; and
- the abeyance of an application pending a decision on a prior application by a third party.
The required documents for the purpose of filing trademark applications are:
- power of attorney duly executed and signed by the authorised officer of the applicant (no notarisation or legalisation is required), including a clear print of the name and title of the signor below the signature. A simple signed copy sent via email or fax to the applicant’s attorney in Brazil is acceptable to the BPTO. Moreover, the power of attorney can be submitted to the BPTO - if not at the filing - within a 60-day term from the filing date in Brazil through a supplementary petition and additional late filing costs;
- in the case of a priority claim, a copy of the priority application, comprising all of the goods and services to be filed in Brazil. The priority documents can be submitted to the BPTO - if not at the filing - within a four-month period from the filing date in Brazil through a supplementary petition and additional late filing costs; and
- in the case of composite or device marks, a clear sample of the mark (usually a high-definition file in jpeg format) and information regarding any colour claim is also required.
What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?
Brazil began to apply the International Classification of Goods and Services (Nice Classification) in 2000. At that time, the seventh edition of the Nice Classification came into force in Brazil - pursuant to Normative Act No. 150 of 9 September 1999. The eleventh edition of the Nice Classification has been in force in Brazil since 1 January 2017.
Given that, until 2000, Brazil followed a national classification system, trademark applications filed prior to that year had to be reclassified in accordance with the international classification as and when renewals were sought.
On 6 January 2006, the BPTO issued Resolution No. 123/06, which suspended the force and applicability of the International Classification System to trademark applications filed up until 31 December 1999, as well as to trademark registrations granted up until 31 December 1999, and which had been classified in accordance with the former Brazilian classification system.
As a consequence, applications or registrations filed or granted up until 31 December 1999 were deemed to have been granted or renewed in accordance with the former Brazilian classification system. The Resolution is still in force, and for this reason there are still registrations in Brazil classified under the national classification system.
Brazilian law does not allow multi-class applications.Examination procedure
What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?
As per the BIPL, after an application is filed, it will be published in the Official Gazette in order to give any interested parties an opportunity to present an opposition, within a period of 60 days. If an opposition is filed, the applicant will be notified to respond within 60 days. After the terms for opposition and counter-arguments have expired, the examination will be conducted. Potential conflicts with senior trademarks will then be considered.
During the period of examination, official actions or requests may be issued and must be responded to within a period of 60 days. If an applicant fails to respond to an official requirement, the application will be definitively shelved. If, however, a response is filed, the examination will continue, even if the requirement has not in fact been satisfied or if the applicant’s response was to lodge a formal challenge to the official action or request.
In the absence of oppositions, the examiner will consider the results of the availability search. If potential conflicts with prior registrations are verified, then the examiner will, ex officio, reject the application. If a possible conflicting registration, which might be cited as grounds for rejection, is under forfeiture or subject to court proceedings or orders, then the examiner will stay the junior application in abeyance pending a final decision in the respective case. The same applies to possible conflicting senior applications that are still under examination.
Although accepted, the BPTO does not consider letters of consent binding on the decision for the registrability of a trademark (ie, even though the BPTO considers the existence of consent by the owner of the senior trademark, this fact per se does not guarantee the allowance of the junior mark).
Once the examination has been concluded, a decision will be issued, either allowing or rejecting the application for registration. In the event of rejection, the applicant will have 60 days to file an appeal to the president of the BPTO.Use of a trademark and registration
Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?
When applying for registration in Brazil, there is no need to claim prior use or to submit proof of use of the trademark.
Priority rights are guaranteed for an application for the registration of a mark, when an application has been filed in a country that has an agreement with Brazil, or filed before an international organisation of which Brazil is a member. The application in Brazil must be filed within the time limits established in the agreement, without the occurrence during said time limits of any fact that invalidates or prejudices the application.
The registrant must initiate the use of its trademark within five years from grant. Failing to do so may result, upon the request of any person with a legitimate interest, in the declaration of forfeiture and consequent cancellation of the registration. Likewise, if use of the mark has been interrupted for more than five consecutive years or if, within that time, the mark has been used in a modified form that implies alteration of its original distinctive character as found on the certificate of registration, the registration may, upon third-party request, be deemed forfeited and cancelled.
The use of the mark must include all the products or services mentioned on the certificate, under penalty of partial forfeiture of the registration with respect to those products or services not similar or akin to those for which use of the mark has been proved.
Forfeiture requests will not be admitted if use of the mark has been proved (or if its lack of use has been justified) in earlier proceedings in the past five years.Markings
What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?
Trademark registrations can be indicated through the use of the ® symbol, MR - Marca Registrada (registered mark), and the sign ™. There is no obligation to use these features on registered trademarks in Brazil. The benefits of using them is to provide credibility and security in the eyes of the consumer. There are no risks of not inserting such symbols next to the trademark.
Misuse of these features can be considered (eg, as misleading advertising and unfair competition).Appealing a denied application
Is there an appeal process if the application is denied?
The applicant may file an appeal against a rejection decision within 60 days. Third parties with a legitimate interest may challenge the appeal within 60 days of the date of publication of notice of appeal.
In the event of the BPTO allowing an application, but subject to limitations or reservations (eg, without the right of exclusive use of a certain word element), the applicant may file an appeal against the limitation.
The appeal and any challenges to it are analysed by the president of the BPTO. A decision to uphold the rejection ends proceedings in the administrative sphere. Thereafter, it is possible for the applicant to file a judicial nullity action against the administrative act that upheld the rejection of the application.
In the event of the rejection being overturned on appeal, the allowance of the application will be automatically published, with the start of the period of time within which the applicant is to pay the final fees for registration.Third-party opposition
Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?
Once an application is filed, it will be published in the Official Gazette for opposition purposes (see question 6). Any interested party will have a 60-day term, counted from the date of the publication, to submit an opposition to the application. After the opposition is filed, the applicant is notified to submit a reply within 60 days. Once the opposition and reply terms have expired, the examination of the application is conducted. The BIPL establishes a pre-registration opposition system. As a consequence, oppositions may be filed only against trademark applications. In this regard, see question 6.
Once the registration is granted and published in the Official Gazette, a 180-day term commences in which any person with a legitimate interest may file an administrative nullity action. It is important to highlight that the administrative nullity action may be also commenced ex officio by the BPTO. The registrant will be notified to respond within a period of 60 days. After the term for counter-arguments has expired and even if no response has been presented, the issue will be decided by the President of the BPTO. This decision brings the administrative stage to a close.
A registration is subject to a declaration of administrative nullity if the registration was granted in conflict with the provisions of the BIPL. To be successful in an administrative nullity action a third party must demonstrate, inter alia:
- a lack of compliance with one of the legal formalities of the BPTO, essential for the proper processing of the application;
- that the trademark registration infringes one of the provisions of article 124 (signs not registrable as marks) of the BIPL;
- that the sign does not meet the essential requirements to characterise it as a trademark; or
- that the registrant’s commercial or professional activities are not consistent with the products or services claimed in the filing petition.
A brand owner who does not yet have trademark protection in Brazil can oppose a bad-faith application for its mark based on the provisions of article 124, XXIII of the BIPL. Said provision specifically establishes that signs that imitate or reproduce, wholly or in part, a third-party mark, of which the applicant could not be unaware owing to the commercial activity in which he or she engages, are not registrable as trademarks, if the sign is intended to distinguish a product or service that is identical, similar or akin to that covered by the existing mark and is likely to cause confusion or association with such third-party mark.
Further, in the event that the bad-faith application matures into registration, the brand owner will have the possibility to file an administrative nullity action against the bad-faith registration based on the same provision. At this stage, it is also possible to file a judicial nullity action against the decision of the BPTO in order to have the grant decision reviewed by a federal court.
Any person with a legitimate interest, or the BPTO itself, may file a judicial nullity action against the trademark registration. The registrant or the BPTO itself may also file a judicial nullity action again the administrative act that annulled a trademark registration. A declaration of nullity will take retroactive effect as from the date the trademark application was filed at the BPTO. A judicial nullity action is statute barred following the expiry of five years from the date of publication of the granting decision.
Of note is that in Brazil, nullity actions are statute barred following the expiry of five years from the date of publication of the granting decision. Notwithstanding, under the Paris Convention, the five-year rule does not apply for judicial nullity actions based on bad faith. Therefore, an action based on this particular argument is imprescriptible.
Official fees for the preparation and filing of an opposition or a reply to an opposition are US$150 and US$50, respectively. On the other hand, the official fees for preparing and filing an administrative nullity action or a reply to an administrative nullity action are US$200 and US$50, respectively. The dollar equivalent of official fees (which are fixed in local currency) fluctuates in line with exchange rate variations.Duration and maintenance of registration
How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?
The trademark registration remains in effect for 10 years commencing with the date of its grant, and may be renewed for equal and successive periods. The renewal request must be filed during the last year of the term of the registration and must be accompanied by proof of payment of the respective fee. If a renewal request has not been made by the end of the registration term, the registrant may make such request within the following six months on payment of an additional fee.
According to the BIPL, it is not necessary to submit proof of use of the trademark when applying for registration or when requesting its renewal. The use of the mark needs to be proved only in the event of a forfeiture request being filed by a third party with a legitimate interest.
As mentioned in question 7, a registrant must initiate the use of its trademark within five years from its grant or the registration may become forfeit and, therefore, extinct. In the event of the use of the mark being interrupted for more than five consecutive years or if, within that time, the mark has been used in a modified form that implies alteration to its original distinctive character, as per the certificate of registration, the registration may also become forfeit and extinct.
If a forfeiture request is filed, the registrant will be notified to reply within a period of 60 days, the onus being on him or her to prove the use of the mark or to justify lack of use for legitimate reasons. An appeal may be lodged against the decision that either declares or rejects forfeiture of the registration. Forfeiture requests will not be admitted if use of the mark has been proved (or if its lack of use has been justified) in earlier proceedings in the past five years.
The BIPL does not set out specific provisions regarding proof of use. When analysing the effective use of trademarks, the BPTO will take into consideration all means of proof admitted by law, such as commercial invoices referring to the registered trademark and its owner, advertising materials and catalogues and documents that prove the import or the nationalisation of the products in Brazil in the case of products that are manufactured abroad.Surrender
What is the procedure for surrendering a trademark registration?
To surrender a trademark registration, a petition with this specific purpose must be filed before the BPTO. If filed by an authorised agent, the power of attorney must contain specific powers to surrender the registration. The surrender can be total or partial and may be filed at any time after the granting of the registration.Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
If a trademark fulfils the requirements for obtaining protection by another legal institute, such as copyright or design, there is no legal impediment to it.Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
The BIPL governs the protection of registered trademark both online and offline. If a registered trademark is used on the composition of a domain name .br, the regulation framework in Brazil provides a specific procedure for challenge such use (ie, the System of Administrative Disputes relating to Internet domain names under .br (SACI-Adm)), which is administered by Registro.br, the organisation responsible for the registration and maintenance of domain names .br. This use also can be directly challenged in the judicial sphere.