1) What is the average time of a trademark registration process until registration is granted?
Currently (October, 2017), from the filing date (filing of the application) to the granting of registration, it is possible to estimate, on average, between 24 to 30 months.
This deadline is applicable to smooth applications, i.e. without any opposition from third parties or official actions. If an opposition is lodged, the average time can be estimated between 36 to 42 months.
2) What is the validity period of the trademark registration? Is it possible to extend the validity of the registration?
The trademark registration in Brazil is valid for 10 (tem) years, counted from the granting of registration date. The registration of a trademark can be renewed every 10 (ten) years, and the request for renewal must be filed within the last year of validity of the registration. For example: for a registration granted on November 01, 2017 valid until November 01, 2027 the renewal request must be filed between November 01, 2026 and November 01, 2027.
The renewal can be requested in the extraordinary term of 06 months (also called “grace period”), after the expiration of the period of validity, according to the Paris Union Convention. In this case, the official fee of the Brazilian PTO will be increased in 50% over the standard rate.
If a renewal request is not submitted, within the aforementioned deadlines, the registration will be extinct.
Most of countries (95%) follows the 10 (ten) years validity term. However, some countries follow the 07 (seven) years validity term, while others follow the 15 (fifteen) years validity term.
3) Can a company or individual person apply for a trademark for any kind of product or service in any of the trademark classes?
The company may only request trademarks to distinguish products or services that are in accordance with its by-law and for activities that it exercises effectively and lawfully.
Individuals may request trademarks for the activities (industrial, commercial or service) that they are effectively engaged. To verify the activity, they must attach documents, such as: Registration before the Tax Authorities; Registration before the professions Board or Agency etc.
4) What is the purpose of the Trademark Classification and which Classification is currently adopted in Brazil?
The purposes of the Classification of Products and Services for registration of trademarks are: a) the internal organization of the offices responsible for registration in each country; b) facilitate prior search; c) delimit the protection conferred by registration and application of the trademark specialty principle.
Until December 1999 Brazil adopted its own trademark classification and exclusive for registrations in Brazil, which we will renamed as “Classificação BR” or “Classe BR”. Since January 3, 2000, Brazil has adopted the International Classification of Trademarks (NCL), established by the Nice Convention, which has been adopted for many years by the great majority of countries, including countries in South America, Central America, North America, Europe and some countries in Asia and Africa.
5) What is a 3D trademark?
Three-dimensional mark is the three-dimensional distinctive sign whose plastic and ornamental shape has the capacity to identify the product. Example: COCA-COLA bottle, packaging format of the chocolate “TOBLERONE”.
6) What is the difference between of fantasy trademark and evocative trademark?
Fantasy trademarks are those formed by expressions that have no meaning in any language, or, are also those that, even formed by expressions with some meaning, have no direct or indirect relation with the product, its characteristics or qualities.
For this reason, as far as legal protection is concerned, fantasy trademarks are classified as strong trademarks, because they have greater protection coverage, and may prevent identical or similar trademarks:
OREO – for biscuits;
SONHO DE VALSA – for chocolate;
TANG – for beverages;
TIGRE – for PVC pipes;
TIGRE – for brushes.
Evocative trademark are those formed by expressions that evoke the product or activity, one of its qualities and characteristics. There are those formed by the very expressions of common usage agglutinated to other expressions or even those that are the result of arbitrary deformation of a radical or expression of common use.
Considering that the legislation prohibits the granting of registrations on generic and common use expressions, product names, indicative of quality etc., when they relate to the product or activity, evocative trademarks, as for legal protection, are classified as weak trademark, since the protection will only fall on the set and / or only on the distinctive presentation (logo) and may only prevent the registration and use of identical trademarks. Evocative trademark owners, in most cases, will have to live with similar trademark for identical products or products with affinity.
BARATEIRO – for supermarkets
FRUTILLY – for fruit ice cream;
MICROSOFT – for computers’ software;
CHOCOBON – for chocolate;
KI-SUCO – for juices and drinks;
SUPER BONDER – for glue;
PENSOFTWARE – for computing services.
7) What should be the procedure to obtain the protection of the mark? At what time should I consult the in-house counsel and/or External Counsel of the company?
The first step is to carry out a clearance search (availability search) to verify whether the mark is available to be registered. If no senior mark is appointed in the search report being a bar for the registration, it is recommended that the application of the trademark be submitted to the Brazilian PTO within the shortest possible time.
The launch of products with new trademarks that are not already registered by the company and which were not the subject of prior search involves a serious risks for the company and for the project, since it may be infringing the rights of third parties and the company will be vulnerable to a legal action, seizure of products and may be forced to stop using the trademark, losing all investments made on the product and the trademark.
For these reasons, it should be adopted as a procedure and basic rule for the company that no new product with a new trademark or new packaging be launched without a previous consultation to the in-house counsel and/or external counsel.
Therefore, any new product’s launch, new trademark and new packaging, as well as modifications of packaging and logos, should be subject to consultation to the in-house counsel of the company.
On the other hand, it is recommended that the in-house counsel and/or external counsel be consulted and involved on the projects from the outset, avoiding loss of time and investments in projects that eventually have to be modified or cannot be implemented because of the prior rights of third parties.
8) Can I launch a product with a non-registered trademark, but already filed before the Brazilian PTO and is pending of examination to be registered?
The launch of products with non-registered trademarks will always involves a great risk. The evaluation of the risk can and should be performed in the clearance search (availability search), although, given the numerous factors and innovations introduced in the Industrial Property Law, it is necessary to recognize that trademark search is not enough to conclude, with 100% of certain, whether the registration will be granted.
Therefore, the product launch is advisable (optimal situation) with trademarks that have already obtained the REGISTRATION. Eventually, the mark may be used after the dispatch of ACCEPTANCE.
The launching of trademark products that are the subject of pending applications should only be a decision made after careful analysis of the availability search and decision to assume the risks appointed.
9) Does the result of the previous search confer certainty of obtaining the grant of the trademark?
No. The result of the search brings, only, information indicative of the possibility or not of obtaining the registration. However, even if no serious impediments are found, the search is not a guarantee that the registration will be granted.
In the event of the search pointing out similar trademarks for identical or alike products, the obtaining of the trademark should be carried out as an attempt and the search serves for risk assessment.
10) Why the result of the search does not allow the certainty of the grant of the trademark?
First of all, it should be considered that, currently, the Brazilian PTO Database has a delay of around 30 days in updating and registering new applications, which are inserted in the Database only after the publication of the application. Therefore, the search does not cover the new trademark, filed at the Brazilian PTO and not published yet.
On the other hand, the Industrial Property Law has introduced a new trademark registration rights and prohibitions that could prevent registration, making it impossible to be aware of all possible previous rights, such as:
- The right of precedence to registration, due to the use of the trademark for more than 06 months before the filing of third parties, which is the protection granted to the previous use of the mark.
- Any conflict with trade names may be impeding the registration, and it is impracticable search in all the Boards of Trade, in all Brazilian States.
11) What are the consequences for the registrant who does not use the mark?
The failure to use the trademark may lead to the cancelation of the registration by forfeiture (non-use cancelation) and, consequently, loss of exclusive rights, opening up the possibility that similar or identical trademarks are registered by third parties.
12) How long can I stop using a mark and not run the risk of losing the registration by the declaration of forfeiture?
We have two different situations:
- New registrations – the owner must initiate the use within the term of 05 years, counted from the granting date.
- Old registrations – the owner can not interrupt the use for a period exceeding 5 years.
13) If the mark is not used within the aforementioned deadlines, will the registration be canceled automatically?
No. The non-use cancelation will only occurs if it is requested by third parties, with legitimate interest, or “ex officio” by the Brazilian PTO, establishing an administrative procedure in which the owner can file a defense and submit proves the use of the trademark. For this reason we say that the lack of use puts at risk the ownership of the registration and, eventually, may motivate the cancelation, but the extinction is not automatic.
14) What evidence can be presented to prove the use of the mark?
It is possible to submit any kind and all evidence admitted in law. Among the main evidences of use we can mention:
- Invoices, containing the description of the product and trademark, which will prove the date and volume of commercialization;
- Advertising material;
- Invoices of suppliers of packaging;
- Customer’s statements.
15) What is the concept and the protection afforded to high-renown trademark?
High-renown trademarks are trademark that have achieved renown and great penetration in the Brazilian market due to the great investment made in advertising, marketing, technology, quality, such as: “NATURA”, “COCA-COLA”, “NATURA” “LACTA” “SONHO DE VALSA”, “DIAMANTE NEGRO”, “BIS”, “PIRELLI”, “MC DONALDS” and “FIAT” etc.
The protection afforded to High-renown trademarks in the Industrial Property Law covers all branches of activity and all classes and therefore is an exception to the principle of specialty.
The law has designated these trademarks as HIGH-RENOWN TRADEMARKS in order to distinguish them from so-called well-known trademarks, since they are different legal institutes.
However, the legislation left a gap and regulated nothing on the form and moment of recognition of the recognition of HIGH-RENOWN TRADEMARKS. The Brazilian PTO took a long time to regulate this issue and understands that the recognition of the HIGH-RENOWN TRADEMARKS will only occur in the decision of an Administrative Appeals filed against third party trademarks and/or through legal decisions aimed at repressing violations, that is, only if conflict occurs.
Only in January 2004 the Brazilian PTO has regulated the recognition of the high-renown trademarks through the resolution 110/04, creating a Special Commission of 03 examiners to analyze the Administrative Resources based on the highly renowned trademarks, which began its work in July of 2004. Currently, it is in force the Resolution INPI/PR No. 172/2016, which substantially changed the term of protection of the high reputation trademark, increasing it to 10 years.
Among the trademark that have already obtained the recognition of the high reputation by the Brazilian PTO we can mention: “HOLLYWOOD”, “3M”, “CHANEL”, “KIBON”, “NATURA”, “SKOL”, “DIAMANTE NEGRO”, “CICA”, “MOÇA”, “VISA”, “AYMORÉ”, “NINHO”, “FIAT”, “TOYOTA”, “ITAPEMIRIM”, “LACTA”, “INTEL”, “AZALÉIA”, “OLYMPIKUS”, “PETROBRAS”, “BRAHMA”, “CHICA-BOM”, “BANCO DO BRASIL”, “CORAL”, “HELLMANN’S”, “DERBY”, “TRAMONTINA”, “HAVAIANAS”, “ITAÚ”, “CHICLETS”, “BIC”, “LAND ROVER”, “O BOTICÁRIO”, “FUSCA”, “BARBIE”, “PLAYSTATION”, “HONDA”, “FABER-CASTELL”, “SONHO DE VALSA”, “PETROBRAS”, “BAUDUCCO”, “TIGRE”, “IBOPE”, “SHELL”, “DONA BENTA”, “BIS”, “GOODYEAR” and “DAKOTA”.
16) What is Well-Known Trademark and what is the difference with the High-Renown Trademark?
The concept and the scope of protection for well-known trademarks are not to be confused with the protection and the concept of high-renown trademarks (which in the previous law was called Notorious Trademarks).
The protection of well-known trademarks is conferred by Article 6 bis of the Paris Convention and Article 126 of the Industrial Property Law, covering those trademarks that have become known and have achieved prestige within their field of activity. The protection conferred is restricted to the branch of activity or related activities and the protection is independent of registration in the country (exception to the principle of territoriality). In any case, the mark must be well known in the country where the protection is claimed. If a trademark is only well known in the country of origin and is not in Brazil or Argentina, for example, this trademark will not obtain protection as a trademark well-known in Brazil or Argentina.
On the contrary, the high-renowned trademarks grant protection is in all branches of activity, and to obtain this recognition is required to be registered in Brazil.
17) What should be taken into account to define the strategy of protecting trademarks abroad?
Some general principles are important and should be taken into account in the definition of a trademark protection strategy abroad, among which we highlight the following:
- The territoriality principle of protection, that is, the protection of a trademark, is subject to REGISTRATION within each of the countries or territories of the Community.
- The principles of attributive law and priority, that is, will be the owner of the trademark and may prevent the registration or use by third parties that first filed and obtained the trademark REGISTRATION (95% of the countries), but in a few countries the trademark rights are granted from the earlier use of the trademark, as in the United States and Canada.
- The principle of specialty, that is, the owner of a trade mark has the exclusive right to the specific goods or services granted in the registration and, therefore, there may be identical or similar trademarks provided that they are to distinguish between products/services and provided that there is no possibility of confusion or association of the consumer.
- The principle of good faith and loyalty in trade and competition.
18) Is there a possibility of obtaining a “global” or “international” registration of the trademark?
There is no “global” registration, that is: the trademark protection in all countries through a single registration. The principle of territoriality prevails, that is, for the protection of the mark it will be necessary to ask the registration of the trademark in each country.
However, there are some systems that provide protection in several countries through a single registration, as in the case of the “EUROPEAN TRADEMARK” which, through a single registration, provides protection in the 28 countries of the European Community.
It is necessary to take into account that even this European Community system obeys the principle of territoriality, since that registration is valid only within the territory of the European Community and, on the other hand, the existence of an earlier registration in any of the 28 countries and since the owner of the previous rights submits an opposition, may be an obstacle to the grant of the European Community Trademark.
A similar system is adopted by the African Intellectual Property Organization (OAPI), in which a single registry will provide protection in 17 countries in Africa, as well as the African Regional Intellectual Property Organization (ARIPO), which the registration has effect in 19 African countries.
Other systems are designed to facilitate the filing of the trademark in several countries through a single centralized application, such as the International Trade Mark Registry created by the Madrid Agreement and the Madrid Protocol administered by the World Intellectual Property Organization (WIPO).
However, this system also obeys the principle of territoriality, since the application for registration of the mark will be analyzed within each country, in accordance with its domestic legislation, and will only be valid in countries in which the registration is granted.
The majority of the countries of the European Community are signatories to the Madrid Protocol, as well as some countries in Eastern Europe, the East and Africa, and in 2002 the United States signed the treaty, which entered into force in that country in November of 2003.
Brazil and the vast majority of Latin American countries are not yet signatories of the Madrid Protocol, only Colombia, Cuba and Mexico.
Brazil is making serious preparations, including seeking to improve the structure of INPI and the hiring and training of new trademark examiners, in order to integrate the international trademark registration system by signing the Madrid Protocol, which may occur in the next years.
19) Can I export products manufactured in Brazil distinguished by trademarks that are protected by registrations granted only in Brazil?
The exportation of products without registration of the trademark in the foreign country, that is the target of the exportation is not recommended, since the commercialization of the product in that country is an activity that involves serious risks, and in the event of violating the rights of third parties, the products may be subject to seizure or impossibility of commercialization if the trademark infringes the earlier trademark registration.
Therefore, it is recommended that prior to export, an availability search in the importing countries should be carried out to evaluate the existing risks and, in the event that the trademark is free to register, the trademark should be applied in those countries.
20) How long does a trademark registration process takes, in average, in the main importing countries/markets in Brazil?
We can summarize this answer in the following countries:
- United States and Canada – between 08 and 12 months.
- South America – between 18 and 24 months, with the exception of some countries such as Chile (08 to 12 months), Argentina and Bolivia (24 to 28 months).
- Central America and Mexico (12 to 18 months).
- Europe (08 to 12 months).
- European Trademark Registration (12 to 18 months)
- Japan and South Korea (12 to 15 months).
- China (between 10 and 12 months).