Notes when registering a trademark in Brazil

Brazil, with South America’s largest economy and a young, dynamic population, is an attractive market for many businesses. In particular, some of the following sectors are witnessing strong growth. In the food and beverage sector, the demand for organic and natural foods is increasing, opening up vast opportunities for clean and healthy products. Besides, non-alcoholic drinks and local specialty products are also very popular. Natural cosmetics, hair and skin care products are the focus of the market. Brazilian consumers are increasingly interested in natural beauty and organically sourced products. Mobile technology, fintech and online education are areas full of potential. The rapid development of the digital economy has created a great demand for technology products and services. Therefore, more and more individuals and organizations have the need to develop brands here, the first is trademark registration. However, the trademark registration procedure in Brazil has a few points to keep in mind.

Legal Basis

• Law No. 9.279 dated May 14, 1996 (Law on Industrial Property, amended and supplemented to Law No. 14.200 dated September 2, 2021);

Notes on the First-to-file principle

The “first-to-file principle” is an important provision in Brazil’s intellectual property system, as well as in many other countries. According to this principle:

• Whoever files first, the trademark is protected: Regardless of who first files a trademark application at the Brazilian intellectual property office, that person will be considered the legal owner of the trademark.
• It doesn’t matter who uses it first: Whether or not you have used the trademark before does not affect the decision of who is the rightful owner. As long as you are the first applicant, you will be granted conservatorship.

Why this principle?

• Avoid disputes: This principle simplifies the registration process and avoids complicated disputes over who actually uses the trademark first.
• Encourage early registration: This principle encourages businesses to quickly apply for trademark protection to protect their rights.

Note that the filing of a trademark registration application must be separate

When registering a trademark in Brazil, the requirement to file a separate application for each type of goods or service means that you cannot use one application to protect many different types of products or services. Each type of good or service needs to have a separate application.

Why is there this regulation?

• Specificity of each type of good/service: Each type of good or service has its own unique characteristics, and the use of trademarks on different types of goods/services can be confusing for consumers.
• International classification: Brazil uses the Nice classification system to classify goods and services. Each type of good/service will belong to a specific group of goods. Separate registration makes it easier to manage and search for information about trademarks.
• Protect consumer rights: This regulation helps protect consumer rights by avoiding the situation where a trademark is used for many different types of products/services, making it difficult for consumers to recognize the origin of the product.

Example:

If you want to register the trademark “ABC” for both soft drink products and auto repair services, you will have to file two separate applications:

• First application: Registration of trademark “ABC” for the group of goods related to soft drinks.
• Second application: Registration of the trademark “ABC” for the service group related to auto repair.

Notes on the composition of a trademark registration dossier in Brazil

To register a trademark in Brazil, the applicant needs to prepare a dossier with specific documents. Here are the details of what the applicant needs:

• Trademark Registration Form: This form can be filled out online through the E-Marcas system  of the Brazilian National Institute of Industrial Property (INPI). The application form will ask for the applicant’s personal information, details of the desired trademark, and the class of goods or services related to the trademark.
• Power of attorney: If the applicant employs a lawyer or representative, the applicant needs to authorize them to process the trademark registration dossier on behalf of the applicant during the registration process.
• Trademark representation image (trademark sample): The applicant needs to submit a clear image of the applicant’s trademark. Depending on the trademark, it is necessary to provide the following documents:
  • For lettermarks: An easy-to-read copy of the text.
  • For visual trademarks: High-resolution images in JPG or PNG format.
  • For 3D brands: 3D avatars or photos taken from different angles.
• Priority claim (optional): If the applicant has previously registered a trademark in another country, the applicant can claim priority based on that registration date. The applicant needs to submit a certified copy of the foreign application and priority documents.
• Additional documents (may be required):
  • Proof of business activity (optional): If the applicant has not started using the trademark, the applicant may need proof of his business activities related to the goods or services related to the trademark.
  • Proof of previous use (optional): If the applicant has used the trademark in Brazil, the applicant can submit evidence such as invoices, marketing materials, or screenshots of the website to prove previous use.

Trademark Application Processing Process in Brazil

After submitting the trademark registration dossier, the state agency will process the application for registration within 6-12 months in the following stages:

Formal examination

INPI will check whether the applicant’s application is fully informed and meets the formal requirements. If the dossier is valid, INPI will publish the application in the Official Gazette of Industrial Property.

Substantive examination

INPI will consider whether the applicant’s trademark meets the requirements of distinguishability and does not infringe on the intellectual property rights of others. If there is any objection from a third party, INPI will hold a hearing to resolve the dispute.

Granting Trademark Registration Certificate

If the applicant’s application is accepted, INPI will issue a Trademark Registration Certificate. The registration certificate is valid for 10 years and can be renewed several times.

If you want to file a trademark registration application, please contact Viet An Law for the most effective support.