Protecting Your Trademark in Brazil

Why Apply for a Trade Mark in Brazil?

Did you know that Brazil is one of Canada’s largest trading partners in South America? With more than 6 billion dollars in goods and services exchanged between the two countries annually, Brazil represents a significant market for Canadian businesses. If you are planning to expand your business operations into Brazil or market your goods and services online to Brazilian clientele, it is prudent to register your trademark in Brazil, because trademarks are territorial in nature, thus, a trademark registered only registered in Canada will offer you no protection in Brazil. While some unregistered trademarks are protected in Brazil, the scope of that protection is limited. For example, Article 126 of Brazil’s Industrial Property Act confers protection to well-known trademarks established in accordance with the Paris Convention, even if those marks have not been registered in Brazil. Nonetheless, in Brazil, the scope of protection for unregistered trademarks is significantly less than that for registered trademarks. Accordingly, registering your trademark in Brazil can help safeguard your brand’s reputation, and contribute to the growth of your business.

The Process of Registering a Brazilian Trade Mark

How is it different than Canada?

The process of protecting a trademark in Brazil is similar to that in Canada, with a few key differences:

• First-to-file versus First-to-use — Unlike Canada’s trademark system, which uses a first-to-use system, Brazil follows a first-to-file system. In brief, a first-to-file system grants the first person who files for a particular trademark, the exclusive use of that mark in association with the claimed goods and/or services, regardless of the presence of other parties who were using that mark first. In other words, Brazil does not require applicants to submit proof of use of the proposed trade mark in association with the claimed goods and/or services when they are filing an application to register the proposed trade mark. Delaying your registration in countries that follow the first-to-file system, like Brazil, may pose an issue since the first-to-file system allows for opportunistic registrants or those referred to colloquially as trademark “trolls”, to register your mark before you and hold your mark hostage. Accordingly, it is important to register your mark early in Brazil, ideally even before you commenced any form of business activity in Brazil.
• Type of eligible marks — A Brazilian trademark must be an original, visually perceptive, and distinctive mark, that may be a word mark, a figurative mark, mixed mark, a three-dimensional mark, a collective mark, a certification mark, or a highly-renowned mark. When contemplating the expansion of your business into Brazil it is important to keep in mind that unlike in Canada, Brazil does not protect sound marks or scent marks.
• Number of classes of goods and/or services — In Brazil, you may only claim one class of goods and/or services for each trademark application. If you wish to claim more than one class of goods and/or services in association with the same mark, you will have to file a separate application for each additional class. In Canada, within the same trademark application, you may claim more than one class of goods and/or services, but extra fees will apply for each additional class.
• Language used to file a trademark application — There are two routes to gaining trademark protection in Brazil—you may file a trademark application through Brazil’s national office, National Institute of Industrial Property (INPI) or apply through the Madrid Protocol, designating Brazil. Note that, if you choose to file through the INPI, your trademark application and other relevant documentation must be in Portuguese. If you would like seek protection in Brazil and file in a language other than Portuguese, the Madrid Protocol may be a more suitable option.
• Filing a trademark application — A foreign application for a Brazilian trade mark requires a Brazilian trade mark agent or attorney to file the application. Note that applicants can work with their Canadian representatives to file the application by liaising with the foreign attorney.

Timeline

It takes roughly 24 months to 30 months to obtain a registered trademark in Brazil, from the time of filing an application. The exact duration to obtain a trademark will depend on the number and complexity of third-party opposition to your application or objections (“official actions”) from the INPI, and the time it takes to resolve the aforementioned opposition and objections.

To file a trademark application through the INPI, you must first register for an account using the E-INPI system and pay the Guia de Recolhimento da União (GRU) fees using the Federal Tax Liability Payment Form. After the GRU fee payment is complete, you will be assigned a GRU number. You will need your GRU number to access the E-Marcas platform, the INPI’s online filing system, to submit your trademark application, GRU payment receipt, and other relevant documentation. Trademark application fees are R$ 355 (approx. $87.90 CAD), if you use the INPI-specified goods and/or services list or R$ 415 (approx. $102.76 CAD) if you choose to define your own goods and/or services list.

After you submit your trademark application, it will be published in the Revista da Propriedade Industrial, the INPI’s Official Gazette, and third parties may oppose to the registration of your mark within 60 days. If a third party opposes your mark, you will have within 60 days to respond. Third parties may oppose your mark, for example, if when registered, will likely cause confusion with their existing, registered trademark. If there is no third-party opposition or after all opposition has been resolved, the examination process will commence. During the examination process, an examiner may issue official actions, of which, you will have to respond within 60 days. An examiner may object, for example, on grounds that your mark lacks distinctiveness or falls outside the scope of registrable marks. After your mark overcomes all third-party opposition and objections from the examiner, or if you mark was not opposed to or objected to, the INPI will approve your trademark application. Following the approval of your application, you must pay the trademark registration fee of R$ 745 (approx. $183 CAD) in order to register your trademark and receive your registration certificate. A Brazilian registered trademark is valid for an initial period of 10 years and may be renewed indefinitely in ten year-cycles.

Maintaining Your Brazilian Trade mark

A Brazilian trade mark registration is crucial for a successful expansion into the Brazilian market. However, you should be careful to file for registration of trade marks that you intend to use. As discussed earlier, Brazil does not require applicants to submit proof of use to obtain registration. Further, recall that a single application is limited to a single class of goods. Obtaining a broad registration may be more costly and may pose a challenge to your registration. While non-use of a trade mark is not grounds to challenge a trademark in Brazil, the Brazilian system does allow third parties to request the forfeiture of trade mark registration after 5 years of non-use.

If you are thinking of expanding your business into Brazil and would like help crafting a Brazil trademark protection strategy, call us today for a complimentary and confidential initial telephone appointment.