sergey-nivens-shutterstock-com-5
21 September 2016PatentsIsabella Cardozo and Anne Holanda

Watch and learn: the benefits of trademark searching

At first glance it might appear that registering a trademark in Brazil is a simple task. There is a certain level of harmonisation within intellectual property laws and the basic steps, such as filing an application, awaiting the Brazilian Patent and Trademark Office (INPI) analysis, paying the registration fees and securing the registration itself, tend to be very similar.

However, there is a long way to go between the development of a trademark and its effective protection, and there are some aspects of the Brazilian trademark registration system that could trip up someone without sound knowledge of the path, or even present unsurmountable obstacles.

The two most important things to know relate to how trademarks rights are acquired in Brazil and the performance, or lack of performance, of the INPI.

Brazil is a first-to-file country and trademark rights are acquired upon registration. The relevance of this is that failing to register a trademark at the earliest possible stage may cause serious problems because a third party may beat the rightful owner of the trademark to registration. Subsequent fighting over the registration may be very frustrating, costly and time-consuming. Accordingly, if Brazil is a market of interest, a local application should be filed as soon as possible and it should always precede the local launch of the corresponding product or service.

"The criteria the INPI apply in rendering rejection decisions on absolute grounds are extremely restrictive—marks that are allowed in many other jurisdictions are often rejected in Brazil"

The second most relevant aspect refers to the never-ending backlog of work of the INPI and the consequent delays in the prosecution of trademark applications. It should be noted that Brazil is still one of the slowest countries in Latin America in relation to trademark registration. The current backlog of applications awaiting examination is 450,000 and each year more than 150,000 new applications are filed.

As a consequence, the average time for securing a trademark registration in Brazil is around 30 months, even if no obstacles are encountered throughout its prosecution. If an opposition is filed or a rejection decision is issued, triggering the filing of an appeal, the waiting time can go up to between six and nine years.

Given the above, conducting searches before filing trademarks is strongly recommended. In our fast-paced world, no company can wait so many years to launch a new trademark and a trademark search allows a company to ascertain if there are likely to be any obstacles. It also allows preventive actions to try to overcome or minimise such obstacles.

The search also allows the identification of potential rejection decisions on the basis of absolute grounds, such as common meaning or descriptiveness. The criteria the INPI apply in rendering rejection decisions on absolute grounds are extremely restrictive—marks that are allowed in many other jurisdictions are often rejected in Brazil.

Brazilian quirks

In addition to the above, the following are a few peculiarities of the Brazilian IP law which are also relevant for any company interested in the Brazilian market.

Unlike in countries which adopt acquisition of rights through use and which actually require use before granting a trademark registration, in Brazil no proof of use is required either for the filing, granting or renewal of an application.

However, a registration becomes vulnerable to cancellation on the grounds of non-use by request of a third party with legitimate interest if use is not initiated within five years of the trademark’s grant, or it is discontinued for more than five years afterwards.

If a trademark is used in a different format than the one granted it can be cancelled on the grounds of non-use. Accordingly, marks filed and granted with a composite presentation must be used with the same composite presentation, and marks filed and granted with a claim of colours must be used with exactly the same colours.

On the other hand, marks filed in a word format can be used with any presentation, and marks filed in black and white can also be used with any combination of colours. So, if the composite presentation or the colours to be claimed are not strategic to your company/client, it is always better to leave these elements behind and file in the word format to get a broader scope of protection.

It is also relevant to know that multiclass applications are not allowed in Brazil. Despite the fact that multiclass applications have been on the INPI’s radar for over a decade, it is impossible to predict when this change will come into effect. So, for the time being, a strategic analysis of the trademark portfolio is necessary to determine which classes are necessary.

More positively, the INPI has improved its performance over the last decade. During this period it has reduced by half the time of analysis of an application and simplified the filing system by allowing electronic filings and the presentation of simple documents, such as simple extracts of databases to support priority claims. It has also opened a channel of communication with its users through an online ombudsman tool which is rather effective in resolving minor problems

All things considered, bearing in mind that Brazil is a top nine country by GDP (according to the UN), with more than 205 million people, and is not a market that can be ignored by major multinational companies, knowing the peculiarities of the local IP law as well as how the registration process works is definitely the first step for securing effective local protection.

Isabella Cardozo is a partner at Daniel Advogados and has worked with intellectual property since 1998. She is a member of the Rio de Janeiro office and has knowledge of the industrial property laws of Brazil, specifically in the area of trademarks. She can be contacted at: isabella.cardozo@daniel.adv.br

Anne Holanda is an associate at Daniel Advogados. Her expertise covers all aspects of IP, with particular emphasis on the protection of distinctive signs and strategies involving the prosecution of trademark applications towards registration at the INPI and the management of portfolios of clients worldwide. She can be contacted at: anne.holanda@daniel.adv.br

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk