Trademark Registration

How to Register a Trademark in Brazil?

Why choose Brazil?

Brazil is one of the fastest-emerging economies, the 10th largest economy in the world with a US$2.310 trillion gross domestic product (GDP) and the largest economy in South America.

This blog comprises a basic introduction to a trademark, different types of trademarks, the benefits of trademark registration, the legal understanding of the trademark law, the eligibility categories, the process for trademark, the generic timeline of trademark registration, businesses that require trademarks, post-enforcement requirements, challenges of trademark registration, and conclusion.

What is a Trademark?

A trademark is a unique identifiable sign, expression, or symbol that labels a product or service into a brand. A trademark helps both local and global entrepreneurs by creating a unique brand identity, which further helps them create brand recognition, build customer trust, expand global business operations, and reduce unauthorized use of counterfeited goods.

What is the validity of a trademark in Brazil?

The validity of a trademark in Brazil is 10 years from the date of the official registration with the National Institute of Industrial Property (INPI) [Instituto Nacional da Propriedade Industrial].

What is the Cost to Register a Trademark in Brazil?

The cost to register a trademark starts from $85.

What is the Primary Law that Governs the Trademarks in Brazil?

Federal Law No 9,279/96 (“Intellectual Property Law”) is the primary law that governs and protects the registration of trademarks such as word, figurative, mixed, three-dimensional (3D), position, collective, certification, and service marks in Brazil.

Legal Understanding of the Federal Law No 9,279/96 (“Intellectual Property Law”)

It is the primary law that governs and protects the registration of trademarks, such as the administration of trademarks, and monitoring and cancelling trademark infractions through civil, criminal, and customs enforcement, thereby allowing entrepreneurs to claim damages against the unauthorized use of trademarks in Brazil.

1. Civil Enforcement:

1.1) Introductory Injunctions:

The law provides regulations that award initial and introductory injunctions in case of urgent trademark infractions cases.

1.2) Ex-parte Injunctions:

The law provides regulations that grant ex-parte injunctions to help businesses prevent immediate loss of their exclusive rights.

1.3) Damages:

The law provides regulations that entitle a trademark owner to claim damages as per the loss in terms of profits, royalties, and reputation.

1.4) Confiscation of Counterfeit Goods:

The law provides regulations that ensure the proper confiscation of counterfeited brands after receiving an application by the trademark owner or during a trial.

1.5) Elimination of Counterfeit Goods:

The law provides regulations that ensure the proper elimination of counterfeited brands after receiving an application from the trademark owner or during a trial.

2. Criminal Enforcement:

2.1) Prosecution:

The law provides regulations for public prosecutors to prosecute fraudsters in the trademark owner’s and public interest.

2.2) Criminal Imprisonment:

The law provides regulations against the sale or alterations of registered trademarks by imposing criminal sentences on trademark infringers.

2.3) Fines:

The law provides regulations against the sale or alterations of registered trademarks by imposing fines and penalties on the unauthorized use of trademarks.

2.4) Confiscation of Counterfeit Goods:

The law provides regulations that force legal authorities to inspect and confiscate counterfeited goods through the means of search operations and investigations.

3. Brazilian Customs Enforcement:

The law provides regulations that force Brazilian Customs Authorities to conduct search operations at the Brazilian border to control the import and export of counterfeited goods regularly or upon receiving an application by trademark owners.

The National Institute of Industrial Property (INPI)’s Resolution PR nº 247 of September 9, 2019:

This resolution provides regulations concerning the registration of multi-class trademarks in Brazil.

The National Institute of Industrial Property (INPI)’s Resolution nº 248 of September 9, 2019

This resolution provides regulations concerning the registration of a trademark through the Madrid System of the Madrid Protocol.

International Treaty Agreements

Brazil is a signatory to the following international treaty agreements:

• The Paris Convention
• The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)
• The Madrid Protocol
• The Nice Agreement

Types of Trademarks

It is very important for local businesses and entrepreneurs to understand different categories of trademarks. Types of trademarks are as follows:

1) Word Mark:

A word mark is a trademark that comprises of one or more words, letters, and numbers in a fixed format. It protects words and combination of words, letters, and numbers.

2) Figurative Mark:

A figurative mark is a trademark that comprises of images, logos, or symbols with zero-word elements. It protects the graphical representation of a brand.

3) Three-dimensional (3D) Mark:

A three-dimensional (3D) mark is a trademark that comprises specific 3D shapes of a product or service. It protects the 3D elements of a brand’s packaging.

4) Mixed Mark:

A mixed mark is a trademark that comprises of both text and graphics. It protects the textual and graphical representation of a brand.

5) Position Mark:

A position mark is a trademark that focuses on the distinct placement of a product or service. It protects the distinct placement of a brand.

6) Collective Mark:

A certificate mark is a trademark is collectively owned by a group of companies or association. It showcases the trademark owner’s collective interest to certain standards. 

7) Certification Mark:

A certification mark is a trademark that is used to indicate a product’s quality and origins with respect to certain standards.  

8) Service Mark:

A service mark is a trademark that comprises a service of a brand. It protects service providers.

Benefits of Registering a Trademark in Brazil

All goods and services that have a unique identity must register a trademark. The benefits of registering a trademark in Brazil are as follows:

1) Brand Reputation:

A trademark helps local and global businesses establish a unique brand identity and recognition in the consumer market of Brazil. It can help businesses establish customer trust and authenticity with the help of a registered trademark, thereby building up the overall brand reputation.

2) First to File System:

Brazil provides a first to file system for a trademark to all businesses, including global entrepreneurs. This system helps global entrepreneurs to register a trademark on a first preference basis in Brazil before expanding their brand in the global market.

3) Legal Protection:

A trademark empowers local and global entrepreneurs with legal rights and protection through Federal Law No 9,279/96 (“Intellectual Property Law”) against the unlawful use of their brands. The law provides various regulations that permit local and global entrepreneurs to file lawsuits and claim damages against the unauthorized use of their brands.

3) Exclusive Rights to Brands:

A trademark helps local and global entrepreneurs by providing them exclusive rights and a unique identity for their brands that will further help them create a competitive advantage in the diverse consumer market of Brazil.

4) Global Business Expansion through the Madrid Protocol:

Global entrepreneurs can register a trademark through the Madrid Protocol with a single application into the multi-category system through an automated application approval with the National Institute of Industrial Property (INPI). The protocol helps global entrepreneurs file trademark applications in the World Intellectual Property Organization (WIPO) member countries through the means of a single application.

5) E-commerce and Supply-Chain Market Entry:

A trademark helps local and global entrepreneurs get easy market entry into the fast-growing e-commerce and supply-chain industry through the means of granting exclusive rights to their unique branded products and services.

6) Asset Creation:

A trademark helps local and global entrepreneurs by increasing the brand value of their products or services because a trademark acts as an intangible asset for a business. Trademark owners can sell, license, and franchise their brands, thereby creating and increasing the overall brand value.

Eligibility Conditions for Trademarks

The eligibility conditions to register a trademark are as follows:

1) Brazilian Individuals and Companies

2) Foreign and Non-Resident Individuals and companies with the help of a trademark attorney based in Brazil

3) Global Entrepreneurs through Madrid Protocol

What is the Process to Register a Trademark in Brazil?

It is important for local and global entrepreneurs to understand the step-by-step process as follows:

1) Trademark Name Search

The applicant must conduct a preliminary trademark business name search through the National Institute of Industrial Property (INPI) to check the availability of the desired trademark.

2) Application Submission

The applicant must submit the registration application with necessary documents such as personal and tax ID details, power of attorney (POA) if applicable, and other relevant documents with the National Institute of Industrial Property (INPI).

3) Initial Examination and Gazette Publication

The National Institute of Industrial Property (INPI) officials conduct an initial examination of the application, such as identification details of the applicant alongside the application fee confirmations, then publish the trademark in their official weekly magazine.

4) Opposition

The National Institute of Industrial Property (INPI) officials allow an objection period for third parties to file objections against the newly registered trademarks on their official weekly magazine.

5) Extensive Examination

The National Institute of Industrial Property (INPI) officials conduct an extensive examination of the application to check the legality of the trademark as per Federal Law No 9,279/96 (“Intellectual Property Law”) after the end of the opposition period.

6) Trademark Approval and Gazette Publication:

The National Institute of Industrial Property (INPI) officials approve the application and publishes the same on their official weekly magazine. The INPI requires the applicant to pay the final trademark certificate fee at this stage.

7) Issuance of the Trademark Certificate

The National Institute of Industrial Property (INPI) issues the trademark certificate, thereby authorizing the trademark owner with exclusive legal rights of the brand.

How Long Does It Take to Register a Trademark in Brazil?

The National Institute of Industrial Property (INPI) takes 12-18 months to register a trademark. The generic timeline is as follows:

• The applicant takes 3 to 5 days to conduct the trademark name search.
• The applicant takes 1 to 5 days to submit the trademark application.
• The trademark officials take 12 to 16 weeks to conduct an initial examination and publish the trademark in their official weekly magazine.
• The trademark officials allow an 8-week opposition period.
• The trademark officials take 4 to 8 months to conduct an extensive examination of the application.
• The trademark officials take 8 to 12 weeks to approve and publish the Trademark in their official weekly magazine.
• The trademark officials take 8 weeks to issue the trademark certificate.

Documentation for Registering a Trademark in Brazil

The document requirements are as follows:

• A completed trademark registration application form.
• Name, address, and other relevant identification details of the applicant.
• Tax identification details of individual applicants [Cadastro de Pessoas Físicas- (CPF)].
• Tax identification details of corporates [Cadastro Nacional da Pessoa Jurídica- (CNPJ)].
• A printed representation of the intended trademark.
• A summary of the intended trademark.
• List of goods and services of the intended trademark as per the Nice Classification of Nice Agreement.
• The payment confirmation receipt.
•  A notarized copy of power of attorney (POA) for foreign applicants.
• A trademark attorney detail for foreign applicants.
• Priority and translation documents, if any.
• An affidavit explaining the use of intent.

Is the Trademark Eligible for Renewal?

Yes, the trademark is eligible for renewal. The trademark owner must renew the trademark with the National Institute of Industrial Property (INPI) through their online e-Marcus module trademark renewal facility within the last 12 months of the ongoing 10-year registration period for a standard nominal fee.

Is there a Grace Period to Renew a Trademark?

Yes, the National Institute of Industrial Property (INPI) provides a 6-month grace period for a surcharge with the trademark renewal fees. The INPI imposes a condition to provide the continuous use testimonial of the trademark in question at the time of the renewal.

Can a Trademark get Canceled?

Yes, the National Institute of Industrial Property (INPI) can cancel a trademark under the following circumstances:

1) Failure to Renew the Trademark:

The National Institute of Industrial Property (INPI) will cancel a trademark if the trademark owner fails to renew the trademark after the expiration of the six-month grace period.

2) Non-use of the Trademark:

The National Institute of Industrial Property (INPI) will cancel a trademark if the trademark owner doesn’t demonstrate the continuous use of the trademark for five years. The INPI can cancel a trademark on its own accord or on the basis of a third-party application.

3) Fraudulent Related Cancellation:

The National Institute of Industrial Property (INPI) may cancel a trademark upon receiving an application from a third party challenging the intended trademark on the basis of bad faith use, such as trademark application to confuse the public against the competitor’s brand.

4) Cancellation as per the Good Faith Preceding Use Exception:

The National Institute of Industrial Property (INPI) may cancel a third-party trademark upon receiving an application from an unregistered entrepreneur alleging the use of a product and service for six months in good faith as per Article 129, Paragraph 1, of the Federal Law No 9,279/96 (“Intellectual Property Law”).

What Businesses Require a Trademark?

All businesses that are engaged in the business of goods and services with a unique identity must register their brand:

The list is as follows:

• Food and Restaurant Chains Business
• Fashion and Luxury Brand Business
• Software Developers and IT Business
• Healthcare and Pharmaceutical Business
• Financial Institutions and Fintech Business
• Hotel and Travel Business
• Cosmetic and Skincare Business
• Retail and E-commerce Business
• Automobile Manufacturers and Transport Business
• Agriculture and Crop Production Business

What are the Post-Enrolment Compliances?

The post-enrolment compliances are as follows:

1. The trademark owner must demonstrate the continuous use of the trademark to avoid cancellation.
2. The trademark owner must renew the trademark post the 10-year initial trademark expiration.
3. The trademark owner must prepare a trademark agreement after the issuance of the trademark certificate.
4. The trademark owner must notify the National Institute of Industrial Property (INPI) in case of any change or modification in the ownership of the trademark.
5. The trademark owner must monitor any potential trademark infringements with the help of the National Institute of Industrial Property (INPI) and the Brazilian Customs Authority.
6. The trademark owner must maintain post-enrolment compliance with the pertinent international treaties.

What are the Challenges in Registering a Trademark in Brazil?

Businesses and global entrepreneurs may face certain challenges while registering a trademark in Brazil. Some challenges are as follows:

1) Similar Trademarks:

The National Institute of Industrial Property (INPI) may cancel the application for trademark registration in Brazil if it resembles an already existing trademark in its database.

2) Local Representative Requirement for Foreign Entrepreneurs:

Federal Law No 9,279/96 (“Intellectual Property Law”) mandates a registered local representative for foreign entrepreneurs, which could be difficult for those who don’t quite understand the complexity of Brazilian laws concerning international business. 

3) Language Obstruction:

The Federal Law No 9,279/96 (“Intellectual Property Law”) mandates the use of Portuguese language in both trademark applications and relevant documents, which could increase the cost and time of the registration due to the appointment of translators.

4) Administrative Delays:

The National Institute of Industrial Property (INPI) takes 12 to 18 months to register a trademark, which could be lengthy and tiresome for global entrepreneurs.

Conclusion

Trademark registration can be challenging, especially for global entrepreneurs, concerning the complexities that are associated with international business and language barriers. Still, it’s also rewarding because Brazil is the 10th largest economy in the world and the largest economy in South America. Brazil has a lot to offer from robust e-commerce and diverse consumer markets to low costs and easy trademark registration processes.  

To get expert assistance in trademark registration in Brazil, visit https://enterslice.com/.

Frequently Asked Questions