Brazil is one of the largest economies in the world, with an estimated GDP of approximately US$2.174 trillion, and the Brazilian consumer market is substantial, supported by a population of over 212 million people. Therefore, Brazil attracts a large number of foreign companies interested in registering and protecting their patents and trademarks in the country.
With respect to trademarks, Brazil is currently the 5th country that receives the most trademarks in the world, and the expectation is to receive around 500,000 trademark applications this year.
However, the legislation and administrative procedures can be complex, requiring strategic planning and in-depth knowledge of local regulations.
This article provides an overview of the available strategies for international trademark protection in Brazil, covering key legal mechanisms and explaining the step-by-step registration process.
Legal framework for international trademark protection in Brazil
Trademark protection in Brazil is regulated by the Industrial Property Law (LPI – Law No. 9.279/96), which establishes the requirements and procedures for trademark registration and enforcement in the country. The Brazilian Patent and Trademark Office (INPI) is the government agency responsible for administering this process.
Brazil is also a signatory to major international treaties that facilitate foreign trademark registration, the most significant being the Madrid Protocol. This international system allows businesses to register trademarks in multiple countries through a single application, reducing costs and bureaucracy for companies seeking global expansion.
The Madrid Protocol and its application in Brazil
The Madrid Protocol, which is part of the Madrid System administered by the World Intellectual Property Organization (WIPO), offers a centralized process for companies and individuals to protect their trademarks in multiple countries through a single application, designating the territories or countries where they wish to obtain protection. The Madrid Union currently has 115 members, covering 131 countries. These members represent more than 80% of the world trade.
Brazil joined the Madrid Protocol in 2019, making the registration of international trademarks simpler and less costly for foreign companies wishing to operate in the country.
According to the latest survey published by INPI, between the period of October 2, 2019 to April 27,2023, Brazil has received 35,424 designations from foreign applicants seeking trademark protection in the country through the Madrid Protocol during the same period. These designations encompassed 85,728 classes, averaging 2.4 classes per designation.
To apply for international trademark registration in Brazil under the Madrid Protocol, the following steps must be followed:
- File or register the trademark in the country of origin, which will serve as the basis for the international application.
- Submit the international registration application through the office equivalent to the INPI in the country of origin, designating Brazil as one of the desired territories.
- Forward the application to WIPO, which reviews it and sends it to INPI for evaluation, which examines compliance with national legislation, with the authority to approve or reject the application.
The average examination period by the INPI is around 18 months, but it can be extended in case of oppositions, provisional refusals, or additional requirements during the process. If approved, the trademark is registered and protected for 10 years from the date of the international registration, and it can be renewed indefinitely.
Direct registration with INPI: an alternative to the Madrid Protocol
Although the Madrid System is a beneficial option for many companies, some still prefer to register their trademarks directly in Brazil without using the international system. Domestic registration filed directly before the INPI is a valid alternative, especially for companies that wish to have more specific control over the process, as it is better adapted to the particularities of the Brazilian market and offers the possibility of bypassing certain limitations and deadlines, which can be longer in the international system.
The direct registration process follows these steps:
- Availability search: Before initiating the process, it is recommended to check whether an identical or similar trademark has already been registered in Brazil, as well as to examine the inherent distinctiveness of the sign under Brazilian practice and regulations.
- Nice Classification: The trademark must be classified under one of the 45 classes of the Nice Classification, which categorizes goods and services into specific classes.
- Filing the application with INPI: The company must submit an application form, pay the applicable fees, and provide the required documentation.
- Formal and substantive examination: INPI analyzes the application’s compliance with legal requirements, potentially requesting modifications, such as corrections in the description of goods and services.
- Publication for opposition: The application is published so that third parties can file oppositions within 60 days.
- Substantive examination: The INPI analyzes whether the requirements for registrability are met.
- Decision and grant: If there are no impediments, the registration is granted, and the trademark is registered, gaining protection for a period of 10 years from the date of grant.
Trademark protection and enforcement in Brazil
Once registered, a foreign trademark in Brazil must be protected against unauthorized use by third parties. Key measures include:
- Monitoring competing trademarks and similar registrations with INPI to prevent future conflicts.
- Legal actions against unfair competition or unauthorized use of the trademark.
If a company identifies trademark infringement, it can resort to administrative proceedings before INPI, such as filling oppositions and cancellation requests, and/or pursue legal proceedings to seek compensation and prevent unauthorized use of the trademark.
The importance of specialized legal consultancy
International trademark protection in Brazil is a crucial step for foreign companies looking to ensure exclusive rights over their trademarks and establish a solid presence in the Brazilian market. The Madrid Protocol has brought significant improvements, simplifying the registration process and reducing costs, but it does not eliminate the need for specialized oversight.
Given the challenges and legal requirements, having expert legal counsel is essential to securing an effective registration, avoiding disputes, and safeguarding the brand’s market value in Brazil.
Ricci Intellectual Property has a highly specialized team to identify the best practices for protecting your business, ensuring legal security, safeguarding intangible assets, and strengthening competitive advantages in the market.
