Doing Business in Brazil

4.1. Trademark

10/01/18

4.1.1. Signs that may be registered as trademarks

According to the Brazilian Industrial Property Law (LPI) – Law 9.279/1996 – the distinctive signs that are visually noticed and used to identify the origin of certain products or services may be registered as trademarks.

Therefore, in Brazil, the signs that are accessible only for the sight, hearing, taste and smell cannot be protected as trademarks.

In addition, signs that cannot be registered as trademarks are those that may fall into the legal prohibitions contained in article 124 of the said law, such as signs contrary to moral and good customs; reproduction or imitation of a characteristic element of a title of establishment or the name of an undertaking belonging to a third party; a sign of a generic, necessary, usual or simply descriptive character , when related to the product or service to be distinguished, a sign or expression used only as a means of advertising; reproduction or imitation of a registered third party trademark; etc.

The National Industrial Property Institute (INPI) is the Brazilian Self-Regulatory Body responsible for registration of trademarks in Brazil.

4.1.2. Modalities of trademark registrations

The trademarks in Brazil may be registered in the following forms: (i) nominative (only words); (ii) word and design (styled drawing, word or letters); (iii) figurative (only drawing); and (iv) three-dimensional (drawing in three dimensions – example: product or packaging format).

4.1.3. Possible purposes of the trademarks

As per article 123 of the LPI, the trademarks may have three purposes:

(i) to distinguish a product or service from one having a different origin, that is identical, similar or akin – trademarks of products and service;

(ii) to attest that a product or service conforms with determined technical norms or specifications, notably in relation to its quality, its nature, the material used and the methodology employed – certification trademarks; and

(iii) to identify products or services originated from members of a certain entity – collective trademarks.

4.1.4. Applicant of trademark registration

The applicant for a trademark, whether a Brazilian or foreign natural person or legal entity, must prove that they perform, legally and effectively, directly or through a company that they directly or indirectly control, the activity to which protection of the goods and services to be identified by the trademark is claimed. Said condition must be declared in the application for trademark registration.

4.1.5. Priority Right

In the event of a trademark application to be filed in Brazil which has already been requested in a country that has an agreement with Brazil or with an international organization, the right to priority can be granted, provided the time periods set in the agreement are fulfilled.

As provided in article 4 of the Convention of the Union of Paris (CUP), which Brazil is also a signatory party, the period to request priority is of six months for trademarks. Therefore, the trademark holder is entitled to the filing date in the country of origin, and any fact which occurs within this period (between the original filing and the filing in the country where the priority is requested) shall not prevent its registration in Brazil.

The claim for priority will be made and proven as provided for in article 127 and paragraphs of the LPI.

4.1.6. Protection conferred by trademark registration

As a rule, the trademarks are protected in certain classes of products and services and, by the Principle of Speciality of the Trademarks, the coexistence between similar trademarks is possible and even if they are identical to identify products or services that are totally distinct, as the trademark protection ends in the limits of its activities.

An exception to said Principle are the “famous marks”, which have a special protection in all fields of activity in the national territory, pursuant to article 125 of the LPI.

The referred article 125 of LPI is regulated by Resolution INPI/PR 107/2013, with the changes brought by Resolution INPI/PR 172/2016.

The notoriously known trademark also has special protection, but only in its field of activity and regardless of being previously filed or registered in Brazil, according to the terms of article 126 of the Intellectual Property Law (LPI), as well as of article 6 bis (I), of the Convention of the Union of Paris (CUP).

Brazil adopts the attributive system of trademark protection, that is, its property as well as its right of exclusive use in the national territory is only acquired with the registration validly issued by the National Industrial Property Institute – INPI. The holder of a trademark application has the mere expectation of rights but, certainly, this person will enjoy the rights of previous use since the INPI’s exam takes into consideration the one that first filed its application, taking into account the day, time, etc.

It should be noted that the LPI also provides the preferential right (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 products or services or similar ones for at least six months, can have his/her right of previous use prevailed.

The protection of trademark registration in Brazil is valid for 10 (ten) years, counted from its granting, to be extended for successive periods of ten years, on an endless basis.

The registrant of, or applicant for, a mark is also guaranteed the right to (i) assign its registration or application for registration, (ii) license its use and (iii) care for its material integrity or reputation, under the terms of article 130, clauses I, II and III of LPI.

4.1.7. Necessity of use of a registered trademark

The simple granting of trademark registration may not mean ease of mind or intangible or unchangeable rights, even if the granting has occurred without any defect that could make it null and void. This is because the holder of a trademark registration in Brazil has the period of five years from the date of its granting to start its use, provided that if after this period its use is not initiated or proven, the holder may be subject to an administrative proceeding of forfeiture, which aims the cancellation of the registration for lack of use. It should be highlighted that the trademark must be used in the way its registration was granted.

Even if the use of the trademark is initiated after the aforementioned period, if it is interrupted for five consecutive years, the registration is likely to be declared forfeit. The forfeiture process may be filed by a third party with legitimate interest.

According to the note issued by the Permanent Committee for Improvement of Guidelines and Examination Procedures (CPAPD) of INPI n. 01/2018, published on July 3, 2018, any evidence of use of the mark during the five years corresponding to the investigation period will be sufficient to avoid the declaration of forfeiture, irrespective of the amount of evidence submitted.

Both the holder of the registration and the possible licensee may prove the effective use of the trademark in order to avoid this to be declared forfeited

4.1.8. Trademark License of Use

With regard to the trademark license agreement, this can be made by the registrant or applicant for a mark and the licensee is vested with full powers to act in defense of the trademark. This license must be recorded before the INPI so that it may produce effects relative to third parties. However, one should note that, according to LPI, in order to validate proof of use, license contracts need not be recorded at INPI.

4.1.9. Crimes against trademark registration

It should be noted that in Brazil the trademarks are protected both by civil and criminal laws, and the breaching parties shall be subject to penalties that may range from 1 (one) month to 1 (one year) of imprisonment, as provisioned in articles 189 and 190 of the LPI.

The criminal actions subject to the penalties under the LPI are:

• Reproduce, without the authorization of the holder, in its whole or in its part, a registered trademark, or to imitate it so that it may induce to misunderstanding;

• Change the registered trademark of a third already applied to a product placed on the market;

• Import, export, sell, offer or exhibit to sale, omit or maintain in stock (i) a product that is marked with a trademark that is illicitly reproduced or imitated, from a third party in its whole or in its part, (ii) product of its industry or commerce which is contained in a glass bottle, recipient or package which contains the legitimate trademark of a third party.

4.1.10. Geographical indications

It should be noted that the Brazilian Industrial Property Law foresees the protection of geographical indications, i.e., the indication of origin and naming of origin.

Origin indication is the geographical name of the location that has become known by the extraction, manufacturing or production of a certain product or rendering of a certain service.

On the other hand, one is regarded as origin naming the geographical name, which also became known by the extraction, manufacturing or production of a certain product or rendering of a certain service but whose human and natural factors of this location influenced in the quality or characteristic of product or service.

Authors: Ana Carolina Lee Barbosa and Marina Inês Fuzita Karakanian
Dannemann, Siemsen, Bigler & Ipanema Moreira

Authors: Ana Carolina Lee Barbosa and Marina Inês Fuzita Karakanian

Dannemann, Siemsen, Bigler & Ipanema Moreira

Rua Marquês de Olinda, 70 – Botafogo
22251-040 Rio de Janeiro- RJ
Phone: +55 (21) 2237 8700
Fax: +55 (21) 2237 8922
E-mail: [email protected]

Av. Indianópolis, 739 – Indianópolis
04063-000 São Paulo – SP
Phone: +55 (11) 2155 9500
Fax: +55 (11) 5549 2300
E-mail: [email protected]
Internet: www.dannemann.com.br