1. Why register a trademark?
For both commercial and protection reasons, trademarks should be registered. The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in Brazil. Registration is prima facie evidence of ownership and validity.
2. Is registration of a mark mandatory?
Registration is not compulsory, but it is advisable. Trademark rights depend upon ownership of a registration and, as discussed below, the legal benefits of registration may not be available otherwise.
3. What is registrable?
Color combinations, design marks, word marks, service marks, certification marks, collective marks, three-dimensional marks and devices that are distinctive and not prohibited by law are registrable.
4. Can a trademark be registered for retail and like services?
Yes.
5. How are domain names protected?
Domain names are registered on a first come, first served basis by FAPESP, Brazil抯 domain name registration authority. Once a domain name has been registered, FAPESP prohibits the registration of other domain names that are identical (except for different punctuation). FAPESP also declines to register domain names containing trademarks that were declared "well-known" under the old Brazilian Patent and Trademark Law, except to the proprietor of such a well-known mark. Further, FAPESP subjects foreign companies to additional application requirements and requires that they incorporate a Brazilian subsidiary within one year or lose the registration.
6. Should a trademark be searched before filing?
Applications are officially searched as to prior marks after publication for opposition purposes. If the applicant makes no prefiling search, and the official search is clear, the cost of the prefiling search is saved. However, if the official search is not clear, the prefiling search could have saved the applicant the cost of filing an application. If the mark is to be used in many countries, a prefiling search is recommended, at least in major countries, to avoid unnecessary costs entailed by adopting, developing, and filing a mark that has already been registered by someone else.
7. How do I file?
An applicant may file either via a home trademark attorney or by directly contacting a Brazilian trademark attorney.
8. What information must be provided before filing?
An applicant must provide specimens of nonword marks that must follow guidelines, unless the mark can be represented in plain block capital letters, full details of the applicant, a list of goods/services to be covered, a power of attorney appointing a Brazilian trademark attorney, and a declaration stating business activity. Furthermore, if the trademark is for a pharmaceutical product, the therapeutic purpose of the product must be specified.
9. Is local registration the only option, or are there international alternatives?
A Brazilian application only has effect in Brazil.
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
Yes. A separate application must be filed for each class of goods or services.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is a member of the Paris Convention, and provided its home application has been filed within the six months preceding a Brazilian application, the filing date of the home application can be claimed as the filing date in Brazil.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
A mark must be used within five years of the registration date. If not, the registration will become vulnerable to cancellation for nonuse. However, late use after five years may cure nonuse, provided that in the interim no third party has filed for or registered an identical or similar mark or has started an action for cancellation for nonuse.
13. Is using a variation of the trademark allowable?
If the mark is used in a manner that implies an alteration of its original distinctive character as it appears on the Certificate of Registration, rights could be lost. However, there is nothing in the law that refers to a slight difference in the mark as used with respect to the mark as registered.
14. Is there any advantage to using a trademark before filing an application?
If the mark has been in use in Brazil for at least six months prior to the date of filing a conflicting application filed by a third party, this prior use can be cited as grounds for a claim to a 搑ight of precedence.?This is an exception to the first-to-file principle.
15. For an application to be valid, are there any particular requirements that must be met?
The applicant must be engaged in a business activity that relates to the goods or services, either directly or through companies that it controls directly or indirectly, and this must be stated in the application.
16. What information is first published about an application/ registration and when is it published?
The first information published regarding an application is the publication for opposition purposes. This publication takes approximately three or four months, counted from the filing date, to be published in the Official Bulletin.
17. What kind of examination (if any) will a new application undergo?
An application will receive an initial formal examination. If the application is complete, it is given a filing number and date. The application is then published for opposition purposes and later examined to determine if the mark complies with local rules as to distinctiveness and intrinsic registrability. In addition, an internal official search is conducted for any prior conflicting marks that would be cited against an application.
18. What response to official objections is required?
The applicant is entitled to reply within 60 days. If a rejection is issued, the applicant can appeal within the same period. No appeal can be filed from an allowance decision.
19. How long is the registration process?
The registration process takes approximately three to four years from the date of filing, assuming no objections are encountered.
20. What rights does an application confer?
The application can be cited against, or used to oppose, a subsequent conflicting application.
21. What is the legal effect of a registration?
The registrant can sue for infringement and oppose subsequent applications.
22. Can an application be opposed or cancelled by third parties?
Yes. Third parties can oppose an application or seek to cancel a registration.
23. Can an application or registration be assigned?
Yes. Applications and registrations may be assigned. All applications and registrations for the same or similar marks that identify identical, similar or related goods or services must be assigned together. If not, they will be cancelled ex officio.
24. Must an assignment include goodwill?
No. An assignment may be either with or without goodwill.
25. Does an assignment have to be recorded?
If an assignment is not recorded and published, it will not be effective against third parties.
26. Can an application or registration be licensed?
Yes. Consult a Brazilian trademark attorney.
27. Does a license have to be recorded?
Yes, if payment of royalties is involved and if the licensee is to be granted rights to litigate in defense of the trademark. Otherwise, recordal is not required.
28. What is the territorial limit of a registration?
The territorial jurisdiction is Brazil.
29. How long does a registration last?
The term of registration is ten years from date of grant of registration, and is renewable for ten-year periods if a renewal application is filed.
30. What is required to renew a registration?
A renewal fee, power of attorney, statement of business activity and prints if the mark is not in plain block letters, are required, but no proof of use is necessary for renewal.
31. Is it necessary to indicate a trademark registration on goods or services?
Marking is optional. However, 揗arca Registrada?or its abbreviation 揗R?may be used, provided the mark is actually registered.
32. Does the International Classification System apply?
Yes.
33. Is your national office accessible online?
Yes. The Brazilian PTO抯 website address is www.inpi.gov.br. |
