1) What is the average time of a trademark registration process until registration is granted?
Currently, from the filing date (filing of the application) to the granting of registration, it is possible to estimate, on average, between 10 to 12 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 18 to 24 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 (ten) 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 ordinary fee.
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 rename 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 a position mark?
The registration of position marks in Brazil was regulated by Brazilian PTO on September 21, 2021, through Ordinance No. 37 of 09/13/2021, which came into effect on October 1st of the same year. According to this ordinance, a set of distinctive features capable of identifying products or services and distinguishing them from identical, similar, or related ones will be registrable as a position mark. The position mark must consist of the application of a sign in a unique and specific position on a given medium, and the application of the sign in said position must be dissociated from any technical or functional effect.
7) What is the difference between of fantasy trademark and evocative trademark?
Fantasy marks are those formed by expressions that hold no meaning in any language, in other words, they are signs coined by their owners and are not found in dictionaries.
On the other hand, arbitrary marks are those formed by pre-existing signs or expressions, but they do not have a direct or indirect connection with the products or services they identify.
For this reason, in terms of legal protection, there is a correlation between the degree of distinctiveness of marks and the protection they are granted. Fantasy marks are classified as strong marks, capable of preventing the use and registration of marks with a lower degree of similarity. Evocative marks, on the other hand, due to evoking characteristics or purposes of the products or services, have lesser protection. They bear the burden of coexisting with marks that have a higher degree of similarity, as long as there is no potential for confusion.
OREO – for biscuits;
SONHO DE VALSA – for chocolate;
TANG – for beverages;
TIGRE – for PVC pipes;
Evocative marks are those formed by expressions that evoke the product or the activity, one of its qualities, or characteristics. Some are composed of common usage expressions combined with other expressions, while others result from the arbitrary deformation of a root or common usage expression.
Considering that legislation prohibits the granting of registrations for generic and common usage expressions, product names, indications of quality, etc., when they are related to the product or activity, evocative marks, in terms of legal protection, are classified as weak marks. This is because protection will only apply to the combination and/or to the distinctive presentation (logo) and will only be able to prevent the registration and use of identical marks. Holders of evocative marks, in most cases, will have to coexist with similar marks 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.
8) 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.
9) 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 marks that do not yet have registration will always involve risks. The assessment of the degree of risk can and should be conducted during the preliminary search (initial search), which, due to numerous factors, is not exhaustive. In other words, the trademark search is highly recommended to ascertain the registrability of the mark and assess the risks associated with using the mark in the market. However, the search is not sufficient to definitively determine whether the registration will be granted, as there are various factors that can influence the analysis of the registration application by the Brazilian PTO.
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.
10) Does the result of the previous search confer certainty of obtaining the grant of the trademark?
No, the search results provide only indicative information about the possibility of obtaining registration. However, even if significant obstacles are not found, the search does not guarantee that the registration will be granted.
In the event that the search identifies similar marks for identical, similar, or market-related products, obtaining the mark should be pursued as an attempt, and the search serves as a risk assessment.
11) Why the result of the search does not allow the certainty of the grant of the trademark?
First of all, it should be noted that there is a period of approximately 30 days between the filing and the publication of a trademark application. Only after publication are the registration applications entered into the Brazilian PTO database and made public. Therefore, the search does not cover new trademarks that have been filed with the Brazilian PTO but have not yet been published at the time of the search.
On the other hand, a trademark search conducted solely within the Brazilian PTO database does not account for the preexistence of other types of distinctive signs, such as trade and business names, copyrights etc.
In this regard, for example, potential conflicts with business names could be a barrier to obtaining registration. Conducting searches across all 27 Commercial Registries in every Brazilian states, in addition to protecting non-business entities and associations names derived from the filing of constitutive documents with the Public Registry of Legal Entities, would be unfeasible and impractical.
Furthermore, the Industrial Property Law grants protection to the good-faith user of an unregistered trademark, ensuring the right of precedence for registration due to the use of the mark for more than 6 months before the filing by third parties. This protection is granted to prior use of the mark.
12) What are the consequences for the registrant who does not use the mark?
The lack of use a 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.
13) 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.
14) If the mark is not used within the aforementioned deadlines, will the registration be canceled automatically?
No. The non-use cancelation will only occur 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.
15) 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.
16) 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 granted to High-renown trademarks by 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, in force is the Brazilian PTO Ordinance No. 8/2022, which deals with the application for well-known status, stipulating that the special protection will last for 10 years from the annotation of the recognition of well-known status.
Among the trademark that have already obtained the recognition of the high reputation by the Brazilian PTO we can mention: Fusca, Barbie, Playstation, Honda, Faber-Castell, Toyota, Sonho de Valsa, Petrobras, Bauducco, Sonho de Valsa, Tigre, Ibope, Shell, Dona Benta, Natura, Skol, Brahma, Bohemia, Claro, Nike, Volkswagen, Nivea, Bombril, Viagra, Dove, Rexona, Adidas, Hollywood, Derby, Jeep, Aspirina, Vigor, Itaú, Garoto, Blindex, Visa, Google, Ninho, Elma Chips, Credicard, Walmart, Omo, Facebook, Neosaldina, Consul, Brastemp, Bic, Hellmann’s, O Boticário, Havaianas, Fanta, Sprite, Unimed, Sony, Maizena, Knorr, Kibon, Kuat, Schin, Kaiser, Danoninho, Suvinil, Olympikus, Lorenzetti, Ype, Sadia, Perdigão, Uol, Globonews, Assolan, Lacta, Flamengo, Embratel, Ultragaz, Ortobom, Qualy, Seda, Vogue, Avon, Pantene, Whatsapp, Youtube, Dakota, 51, União, Seara, Friboi, Neo-Química, Kalunga, among others.
17) 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.
18) 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 trademark 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.
19) 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 Brazilian PTO 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.
20) What the Madrid Protocol is and how it works?
The Protocol Relating to the Madrid Agreement, or as it is more simply known, the “Madrid Protocol.” It’s an international treaty administered by the World Intellectual Property Organization (WIPO) that allows for the international registration of trademarks, currently covering 130 countries, including Brazil.
The Madrid Protocol was established in 1989 as a more modern and flexible alternative to the Madrid Agreement (in force since 1891) aimed at attracting more countries to international trademark registration.
Among the main differences of the Madrid Protocol compared to the Madrid Agreement, we highlight: English and Spanish as official languages, in addition to French; the possibility for Intergovernmental Organizations (e.g., European Union and African Intellectual Property Organization – OAPI) to be part of the treaty; the possibility for the international registration to have a base application (the Agreement only allows base registrations); a term of 18 months for the Designated Country’s Trademark Office to complete the examination or send a provisional refusal notification (the Agreement only allows 12 months); the possibility of converting international registration into national ones in case of refusal.
The Madrid Protocol came into effect in Brazil on October 2, 2019, allowing Brazilian entrepreneurs and companies to benefit from the advantages of using the international trademark registration, among which we can highlight:
- Centralization that allows greater ease for the company’s trademark portfolio management;
- A unified procedure that allows for the protection request of a trademark in over 130 countries;
- Submission of the registration application in the home country in just one language;
- Significant cost reduction for trademark protection in several countries;
- Possibility of co-ownership of trademarks;
- Predictability, as there is a deadline for the examination conclusion (possibility of automatic registration grant);
- Extensions and modifications after registration (e.g., name/address change and ownership transfer) can be requested through a single, simple administrative procedure and the payment of a single fee.
It’s worth noting that, although important countries with significant export markets such as the United States, European Union, China, India, etc., there hasn’t been much adherence to the Madrid Protocol by Latin American countries. The Protocol is currently only in force in Antigua and Barbuda (since 2000), Belize (since 2023), Chile (since 2022), Colombia (since 2012), Cuba (since 1985), Jamaica (2022), and Mexico (since 2013). Thus, at this moment, the use of the Madrid Protocol for Latin American trademark protection is restricted and limited.
Similarly, Brazilian companies with international operations can benefit from international trademark registration, expanding their trademark protection through the Madrid Protocol. They can also consolidate their existing overseas trademark registrations into a single international registration (replacing the national registration with an international one), making their management easier and reducing costs associated with extensions and name/address annotations.
21) 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.
22) 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 12 and 18 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).