Signs that may be registered as trademarks
According to the Brazilian Industrial Property Law (Law no. 9.279 / 1996) – a distinctive sign that is visually perceptible and used to identify the origin of certain goods or services may be registered as trademark.
On the other hand, signs accessible only to the senses of hearing, smell, taste and touch cannot be registered as trademark in Brazil.
In addition, other signs that cannot be registered as trademark are those that fall under any of the legal prohibitions contained in article #124 of the aforementioned law, such as signs contrary to morality and good manners, signs that either copy or imitate a distinctive element of the trade name or the registered business name of a third party; signs that are generic, necessary, common, vulgar or simply descriptive of the good or service to be distinguished; signs or expressions used only as a means of advertising; signs that either copy or imitate a third party’s registered trademark; etc.
Types of trademark registration
In Brazil, trademarks may be registered in the following graphic representations:
- word mark (words only);
- word and device mark (drawings and stylized words and/or letters);
- figurative mark (drawings only); and
- three-dimensional mark (drawings in three dimensions – example: the shape of a product or its packaging).
- position mark.
The position mark is a new modality of trademark protection regulated in Brazil as of September 2021, by Ordinance/INPI/PR 37/2021 and Technical Note INPI/CPAPD nº 02/2021.
The aforementioned normative acts were later consolidated by Ordinance/INPI/PR No. 08, on January 17, 2022, which in Article 84 provides for the position marks.
In accordance with said legal provision, a distinctive set capable of identifying products or services and distinguishing them from identical, similar or alike products will be registered as a position mark, provided that (i) it is formed by the application of a sign in a unique and specific a position on given support, and (ii) whose application can be dissociated from a technical or functional effect.
On 05.30.2023, the first position mark registration was granted in Brazil, subject to amendment of the process n. 830621660, formerly filed as a figurative mark, to protect the position of the eyelets located on the upper front part of Osklen® brand shoes:
Therefore, the position mark will protect a certain distinctive element that is affixed to a product (support) in a position that is not common or necessary/functional.
The trademark applicant
The trademark applicant (who may be an individual or legal entity, domestic or foreign-domiciled) must declare that they engage, lawfully and effectively, directly or through companies that they directly or indirectly control, in any activity that has a commercial or industrial relationship with the services or goods claimed by said trademark. Such declaration must be made in the application for registration of the trademark.
Priority right
In the event of filing a trademark in Brazil that has already been filed abroad in a territory that has an agreement with Brazil or with an international organization, the priority right may be guaranteed – provided that the deadlines established in the agreement are met.
As provided in article #4 of the Paris Convention for the Protection of Industrial Property (CUP), to which Brazil is also a signatory, the period for claiming priority of a previous trademark application is six months. This way, the trademark owner is entitled to claim the filing date of the priority application, and any event that occurs within 6-months (period between the priority filing and the filing of an application in the territory where the priority is claimed) will not prevent its registration in Brazil.
The priority claim must be requested and proven as indicated in article #127 and its paragraphs of the Brazilian Industrial Property Law.
Protection granted by trademark registration
As a general rule, trademarks are protected in certain classes of goods and services and, under the Principle of Specialty of Trademarks, it is possible for similar and even identical trademarks to coexist as long as they identify completely different goods or services (bearing in mind that the protection of a trademark is limited to the business field it is related).
In this sense, it is worth mentioning that Famous marks are entitled to special protection in all business fields within the national territory, in accordance with Article #125 of the Brazilian Industrial Property Law.
Article #125 of the Brazilian Industrial Property Law is regulated by Resolution INPI / PR 107/2013, with the changes brought by Resolution INPI / PR 172/2016.
According to the aforementioned Resolutions, for a trademark to have its Famous status declared, the trademark owner must request such declaration to be issued through a petition filed with the Brazilian PTO and must prove that the following requirements are met:
- A large portion of the Brazilian public in general recognizes the trademark;
- The Brazilian public in general associates the trademark and the goods or services marked by it with quality, reputation and prestige; and
- Degree of distinctiveness and exclusivity of the trademark in question.
The Resolutions recommend that requirements I and II above should be proven through nationwide surveys to be made with people from all geographic regions and social classes, among other documents.
The declaration of Famous status of a trademark will be in force for a period of 10 (ten) years. In the 10th year of the term, the trademark owner may submit a new petition to the Brazilian PTO with updated proof of fulfillment of the requirements mentioned above.
A well-known trademark also grants special protection, however only in its business field, regardless of whether it was previously filed or registered in Brazil (in accordance with article #126 of the Brazilian Industrial Property Law, as well as article 6 bis (I) of the Paris Convention for the Protection of Industrial Property (CUP)).
Brazil adopts the attributive system of trademark protection, which means that the trademark ownership as well as the exclusive right to the use of said trademark in the national territory is acquired only through a registration certificate granted and issued by the Brazilian PTO. The holder of a trademark application has a mere expectation of right, nevertheless, this person is entitled to a priority right: the Brazilian PTO’s examination procedure takes into account the person who first applied for a registration of a trademark, as well as the date and time the application was filed, etc..
It is worth noting that the Brazilian Industrial Property Law also provides for the right of previous use (article #129, 1st paragraph), according to which the person who in good faith at the date of priority or of the application was using in the country an identical or similar trademark to identify identical or similar goods or services for at least six months may enforce their right of previous use.
The protection granted by a trademark registration in Brazil is valid for 10 (ten) years counted from the date the mark is registered, and it can be infinitely renewed for successive periods of ten years.
The trademark holder and the trademark applicant are also guaranteed the right to (i) assign a trademark registration or application, (ii) license its use and (iii) ensure its material integrity or reputation, under the terms of article #130, items I, II and III of the Brazilian Industrial Property Law.
Necessity of use of a registered trademark
The registration of a trademark may not mean tranquility or unattainable and immutable rights, even if the registration occurred without any defect that could render it null. The holder of a trademark registration in Brazil has a period of five years counted from the date of it was registered to start its use, and, after such period, the registration will be subject to an administrative forfeiture, which aims at the cancellation of the registration due to lack of use. In this case, the registration owner must prove the use of the trademark or justify the lack of use for legitimate reasons to maintain the registration in force. It is worth noting that the trademark must be used with the same graphic representation that was registered.
Even if the use of the mark started after the period mentioned above, if it is interrupted for five consecutive years the registration will be subject to forfeiture. The forfeiture proceedings may be requested by a third party with legitimate interest.
According to the technical note of the Brazilian PTO’s Committee for the Improvement of Examination Procedures and Guidelines (CPAPD) no. 03/2022, published on December 19, 2022, a large amount of evidence for the proof of use will not be required, being necessary to prove a minimum use only, according to the products and services and the market involved.
Both the registration holder and the eventual licensee will be able to prove the effective use of the trademark in order to prevent it from being declared forfeited.
According to the same aforementioned technical note, the trademark owner will not be required to prove the use or justify the disuse of the mark during the first five years after the granting of registration. Thus, even during the investigation period, which is five years from the request of cancellation for non-use, it will only be mandatory for the owner to prove the use or justify the disuse of the trademark in the period between the end of the first five years from the granting of registration and the end of the non-use investigation period.
Thus, it is advisable to wait at least one month after the five-year period from the granting of registration to apply for cancellation due to non-use. And, in this case, the owner will be obliged to prove the use or justify the disuse of his mark only for the following period of five years thereafter.
In case of trademarks owned by more than one holder, the proof of use by one of the holders will be sufficient to avoid forfeiture action.
The Madrid Protocol
On October 2, 2019, Brazil became a member of the Madrid Protocol, which provides for the application for international trademark registration. With the inclusion of Brazil to the aforementioned Protocol, domestic applicants may now apply for trademark protection abroad through a single application for international registration by indicating the territories of interest that are also members of the Madrid Protocol. In the same way, foreign-domiciled applicants now have an option when requesting the protection of their marks in Brazil.
Brazilian PTO’s Resolution PR 247/2019 provides information about trademark registration under the Madrid Protocol.
With the inclusion of Brazil as member of the Madrid Protocol, it became necessary to adjust the proceedings for the registration of trademarks both through national filing and through designations received from abroad via the Madrid Protocol, which is why the systems of co-ownership of trademarks and multiclass registration were implemented in Brazil, and they will be mentioned below.
Co-ownership of trademarks
Resolution PR 245/2019 (as amended by Resolution 256/2020) provides information about the trademark co-ownership system, and as of September 15, 2020, it has become possible the recordal of more than one owner or applicant per trademark application or registration.
Multiclass System
Resolution PR 248/2019 (as amended by Resolution 257/2020) provides information about trademark registration under the multiclass system, that is, the possibility of claiming more than one class of goods or services in a single trademark application.
At the moment, applying for a multiclass trademark registration in Brazil is not yet available via national filing and it should only be possible after the Brazilian PTO’s issues an act with the purpose of enforcing said system, according to the first article of Resolution 257/2020.
Dividing trademark applications and registrations
As a consequence of the possibility that there will be applications for multiclass trademark registration filed also through the national route, the division of trademark registrations and trademark applications should be allowed as well, as provided by INPI Resolution PR 244/19, with wording amended by Ordinance/INPI/ PR 35/2021.
According to the aforementioned Ordinance, which came into force on July 1, 2021, the date for the availability of the petition regarding the hypotheses of division of registrations and trademark applications in the Electronic System for Industrial Property Management – e-INPI shall be stipulated in a separate act.
Trademark licensing
With regard to trademark licensing, it can be performed by the registration holder or by the trademark applicant in the way of granting the licensee with sovereign power to act in defense of the trademark. The Brazilian PTO must record the license agreement before it can be enforceable against third parties. However, it is worth noting that according to the Brazilian Industrial Property Law, the license agreement does not need to be recorded by the Brazilian PTO for the purpose of validity of proof of use.
Trademark infringement
It is worth mentioning that in Brazil trademarks are protected not only in the civil jurisdiction, but also in the criminal jurisdiction, where violators who commit trademark infringement are subject to penalties that may range from 1 (one) month to 1 (one) year in prison, according to articles #189 and #190 of the Brazilian Industrial Property Law.
Criminal offenses subject to the penalties provided for in the aforementioned law are as follows:
- Copying or imitating a registered trademark, in whole or in part – without the authorization of its owner – so that it may cause confusion;
- Changing a registered trademark owned by a third party which is already associated with a product placed on the market; and
- Importing, exporting, selling, offering or exhibiting for sale, hiding or having in stock (i) a product marked with an unlawfully copied or imitated mark – in whole or in part, (ii) a product manufactured by your own contained in label or packaging that shows someone else’s legitimate mark.
Geographical Indications
It is also important to note that the Brazilian Industrial Property Law provides for the protection of geographical indications, namely, the indication of origin and the designation of origin.
The geographical name of a place that has become known for the extraction, manufacture or production of a certain product or provision of a given service is considered an indication of origin.
On the other hand, designation of origin is considered the geographical name that has also become known for the extraction, manufacture or production of a certain product, or the provision of a certain service, but whose human and natural factors in this place influenced the quality or characteristic of the product or service.
Authors: Ana Carolina Lee Barbosa and Marina Inês Fuzita Karakanian
Dannemann, Siemsen, Bigler & Ipanema Moreira
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E-mail: [email protected]
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