PROTECTING YOUR TRADEMARKS ABROAD SERIES- BRAZIL

By Sukey Omran

Photo by Alice Yamamura on Unsplash

For the next few weeks, we will be providing general guides to trademark protection in various jurisdictions globally. Please note that these guides do not constitute legal advice and are merely intended to act as an aid if you are considering global expansion.

This week’s guide focuses on protecting your trademarks in Brazil.
 
Where is IP registered? 
 
Brazil’s National Institute of Industrial Property (INPI) is the agency responsible for the administration and registration of patents, trademarks, geographical indications and industrial designs.
 
Trademarks

• What is it: A Brazilian trademark must be a visually perceptive and distinctive, original sign that is not prohibited by any other law. It can be a combination of letters, words, designs or numbers. Brazil also allows 3-dimensional marks, such as the shape or packaging of goods without a functional or technical effect.
• Filing System:  Brazil follows a “first-to-file” system for trademark rights. If someone has been using a similar mark in good faith for 6 months before your filing date, they may be able to challenge your claim to the trademark. Trademark applications must be filed directly with the INPI. Brazilian trademarks only allow registration in 1 class of goods or services. You must submit a separate application for each class.
• After a preliminary examination, a mark is published in the Industrial Property Gazette and becomes open to opposition by interested parties for 2 months. After the opposition period, it is submitted for substantive examination before being granted. 
• Registration Period: In Brazil, a trademark is registered for 10 years from the granting date and may be renewed indefinitely every 10 years. 
• Non-Use: It is not necessary to submit proof of use when filing a trademark application, and non-use is not grounds to challenge a trademark, as third parties can require the forfeiture of trademark registrations after 5 years of non-use. 
• Madrid Protocol: As a member of the Madrid Protocol, Brazil can be designated in an international application filed via the Madrid System.

IP Enforcement
Enforcement is administered on a country-by-country basis. Therefore, you must monitor the Brazilian marketplace for any unauthorized use of your IP. Enforcement of your IP rights is your responsibility.
You may choose to do the following in protecting your IP rights:

• Request assistance from the Department of Federal Revenue of Brazil (Secretaria da Receita Federal do Brasil) as they help prevent counterfeit goods from entering Brazil. 
• Bring your dispute before the state courts of Brazil, unless a federal entity is the accused infringer, in which case it will go before federal court. Brazilian courts can award varying remedies in IP disputes, including monetary damages, imprisonment, fines, temporary or permanent injunctions, and search and seizure orders.
• Choose an alternative dispute resolution method to resolve your IP dispute in Brazil. Mediation and arbitration, which are generally more informal, less adversarial, cheaper and settlement-focused, can also be used as alternatives to going to court. 
• send a “cease and desist” letter to the alleged infringer informing them that you believe they have infringed on your IP rights and advising them to refrain from committing the infringement. 

Interested in expanding your trademark protection into the Brazilian marketplace? Pleasecontact us today.