By: Mauricio Tavares, MT4 INTELLLECTUAL PROPERTY, Brazil
With a population of over 210 million people and a growing economy, Brazil presents a significant market opportunity for businesses. However, navigating the trademark registration process in Brazil can be complex and time-consuming.
This article will provide an overview of the trademark registration process in Brazil, including the requirements, procedures, and timelines involved. By understanding the trademark registration process in Brazil, businesses can protect their brand identity and ensure their success in this dynamic market.
Content
1. What can be registered as a trademark in Brazil?
2. Why can you be refused to register a trademark in Brazil?
3. The process of trademark registration in Brazil
4. Documents required for registering a trademark in Brazil
5. Trademark opposition process in Brazil
6. Costs of trademark registration in Brazil
7. Particularity of the registration in Brazil
8. Final thoughts
1. What can be registered as a trademark in Brazil?
The Brazilian Intellectual Property law, in force since 1996, says, in its article 122, what is registrable as trademarks:
“Any visually perceptive distinctive sign, when not prohibited under law, is susceptible of registration as a mark.”
As we can see, in Brazil, till this moment, it is not possible to register some other types of trademark, like sound or scent marks, but, only visually perceptive distinctive marks.
With this limitation, we can say that, in Brazil, we can file a trademark as:
- A word mark
- A word and device mark
- A device mark
- A three dimensional mark
- A position mark
2. Why can you be refused to register a trademark in Brazil?
In Brazil, the BPTO´s Examiner will analyze the trademark, and this examination includes absolute and relative grounds. It means that the Examiner will check if the trademark is distinctive enough to be registrable, and if it does not infringe the Brazilian law.
In this last point, Brazilian law, we must think not only about the IP law, but, other laws. For example, gambling is not allowed in Brazil, so, we cannot file a trademark to protect gambling or casino services. In the same way, we cannot protect a trademark to protects cannabis stores, as cannabis is not allowed to be sold in Brazil for recreation. We try to adapt all the specifications for our clients in order to avoid any problems.
Some points must be highlighted as the interpretation of them has changed during the years. For example:
- Slogans are not registrable as trademarks in Brazil. In the last years, BPTO has been more restrictive in this analysis. When the trademark, for example, is a logo and in this logo we have a tagline, the chances of refusal, today, are much higher.
- Signs of a generic, necessary, common, usual or simply descriptive character, even with a distinct logo are, in general, also refused today.
- Letters and numbers alone, are considered not registrable in Brazil.
- Expressions, figures, drawings or any other sign contrary to morals and good customs or which offend a person’s honour or image or are an affront to the liberty of conscience, beliefs, religious cults or to ideas and sentiments worthy of respect and veneration are also not allowed to registration. Of course, this item will depend on the understanding of each Examiner.
And, of course, the Examiner will analyze the case in front of prior cases. If the Examiner understands that a trademark is similar to a prior case, and the products and services are the same or similar, the application will be rejected.
3. The process of trademark registration in Brazil
The process of trademark registration in Brazil has improved in the last years. Today, a smoothly process delays around 10 to 12 months from filing to registration.
The process begins with the filing. A trademark search is recommended, but, it not mandatory. But, if we think that we have almost 400.000 new trademark applications in Brazil, it can be interesting to conduct a search before the filing.
In anyway, after the filing, BPTO will conduct a formal examination, to check if the documents are correct, or if there is any point to be clarified. If everything is right, the trademark will be published for Opposition purposes.
In Brazil, this publication will happen around 3 weeks after the filings. It occurs to give publicity to third parties that the trademark application is being requested.
After this publication, third parties can file Oppositions withing 60 days. This Opposition will be also published at the Trademark Bulletin and the trademark applicant can file a Reply within 60 days also.
Only after this period, the Examiner will really analyze the trademark application in its absolute and relative ground. So, it is possible that, even in the case that we have no Opposition filed, the trademark is rejected.
The decision of the Examiner, if the trademark is registrable or not, will happen in about 10 months after the filing, if no Opposition is filed. If we have an Opposition, probably it will delay more 6 months.
The Examiner can allow the trademark for registration, and, in this case, it will be necessary to pay the registration fees; or the Examiner can reject the application, and an Appeal can be filed. In both cases, we will have 60 days to take the necessary proceedings.
Paying the registration fees, we will have the publication of the issuance of registration of the trademark. It happens around 3 weeks after the payment.
If the application is rejected and an Appeal is filed, the case will be examined again, in front of the arguments presented by the attorney of the case. BPTO can maintain the rejection, and, in this case, the administrative part will be ended, or will accept the arguments, and allow the trademark to be registered. Then, we will have the sequence described above.
4. Documents required for registering a trademark in Brazil
In Brazil, we need to present only a Power of Attorney, signed by the legal representative of the company. It is not necessary to notarize or legalize it, and almost all filings are done in an electronic way.
It is not necessary to prove the use of the mark to get the registration, and this use must be proved only if a third party request the cancellation of the registration. This request can be done only 5 years after the registration of the trademark. And the owner must prove the use of it within the last 5 years. The proofs of use can be invoices, advertising including date, or any other document that can prove the use of the mark in an effective way. Read also about AI Patents in Brazil.
5. Trademark opposition process in Brazil
The Opposition process in Brazil begins after the publication of a trademark application. When this trademark application is published at the Trademark Bulletin, third parties can file Oppositions against this case within 60 days.
This Opposition can be based on prior rights, as a prior trademark application or registration, a commercial name that can cause confusion with the trademark (in this case, the Opponent must file the trademark within 60 days to demonstrate his interest in the mark), and even a prior use (in this case, this bona fide use must be higher than 6 months before the filing of the opposed mark). Another possibility is to file an Opposition based on the prior knowledge of the trademark by the new applicant. This prior knowledge must be real and effective, as a commercial contact before the trademark filing. The concept of well-known trademarks is also used in Brazil.
When we file an Opposition, we use all arguments that we have in mind to convince the Examiner about our reason.
After the filing of the Opposition, this notice will be published at the Trademark Bulletin.
The other party, the trademark applicant, will have access to this Opposition and it will be possible to file a Reply within 60 days.
Then, only after the Opposition period, the Examiner will get the case and he will analyze it. But, this Examination will happen not only in front of the Oppositions and Replies, but also in front of prior cases. So, even in the case that we have no Opposition filed, the application can be rejected. But, of course, we recommend the filing of the Opposition in order to give more information for the Examiner.
We have a second chance to “oppose” a trademark. If an Opposition is filed, and the Examiner does not agree with the arguments and allow the application to registration, after its granting, it is possible to file a new petition, called Administrative Nullity Proceeding, trying to cancel the registration before BPTO. It is possible to file it within 180 days after the publication of the granting of the registration.
In the same way of the Opposition, when it is filed an Administrative Nullity Proceeding, it is published by BPTO at the Trademark Bulletin, and the trademark owner will have 60 days to present the defense.
BPTO does not send any formal communication to the Brazilian agents or trademark applicants or owners. All the decision are published at the Trademark Bulletin.
One point to be highlighted is that, when we have an Opposition filed against a case filed through the Madrid Protocol, BPTO does not inform the applicant, and, if the case is not under surveillance of a Brazilian attorney, probably the applicant will have no defense, what is not good.
6. Costs of trademark registration in Brazil
In Brazil, for a smooth process of registration, we have two moments to pay government fees:
Filling fees:
| Professional fees for 1 class | $320 |
| Each additional class | $280 |
| Government fees | R$415 |
Granting fees:
| Professional fees | $320 |
| Each additional class | R$745 |
| Government fees | $160 |
The trademark registration cost in Brazil via the iPNOTE platform starts from as low as $850, which includes all government fees. Find the best trademark agent in Brazil on iPNOTE.
7. Particularity of the registration in Brazil
In Brazil, the trademark registration process has some particularities, like:
- We have the first to file system, but, we have some exceptions for first to use possibilities.
- We have Opposition proceedings. In Brazil, the application is analyzed by the Examiner only after the Opposition period. And the Examiner will analyze it in front of Oppositions, Replies and also in front of prior cases.
- Today, the average time between filing and registration is around 12 months.
- It is possible to cancel a registration if the owner does not use the mark for more than 5 years after the registration date (use requirements). But, this cancellation must be requested by an interested part.
- A trademark registration is valid for 10 years after the registration date.
8. Final thoughts
Brazil is the biggest and strongest economy of South America. A country with more 210 million of people, Brazil is still one of the 10 biggest economies of the world (according to IMF 2022). A diversified country, with several types of industries and services, Brazil is a country with great potential for growth and investment for foreign companies.
Legal enforcement has increased, and the importance of industrial property has grown in recent years. The number of trademark filings by local companies has increased considerably after the pandemic, with the forecast of a stronger market in the coming years. We can say that Brazil will continue to be a great option for all foreign companies to do business and the protection of their trademarks is mandatory for the future.
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