眾律國際法律事務所

Introduction:

Language: Portuguese

Capital: Brazilia

Area: 8,515,767 km2

Population: 207,350,000 (2017)

Currency: Real (BRL)

Religion: Roman Catholicism (64%), Protestantism (22%), other religion (3%)

Geographical situation: Bounded by the Atlantic Ocean on the east, Brazil has a coastline of 7,491 kilometers. It borders all other South American countries except Ecuador and Chile and covers 47.3% of the continent's land area.

International treaty membership:

Convention Establishing the World Intellectual Property Organization (March 20, 1975)

Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods (October 3, 1896)

Paris Convention for the Protection of Industrial Property (July 7, 1884)

Legislation:        

Law No. 9.279 of May 14, 1996 (Industrial Property Law)

Government Institutions:

National Institute of Industrial Property

Ministry of Development, Industry and Foreign Trade (INPI)

Type of trademark:

Registrable as a trademark are all distinctive and visually perceivable signs, such as words, names, acronyms, letters, numbers, devices, combination of colors, three-dimensional forms and any combination of the mentioned signs.

The following trademark types are registrable: trade marks, service marks, collective marks and certification marks. They can be presented as word, figurative, combined (word + figure/logo) and three dimensional marks.

Ground for refusal :

The following are not registrable as marks:

1. official, public, national, foreign or international escutcheons, coats of arms, medals, flags, emblems, badges and monuments, as well as the respective designations, figures, or imitations;
2.  letters, numerals and dates, standing alone, except when endowed with sufficiently distinctive form;
3.  expressions, figures, drawings or any other signs that are contrary to morals and standards of respectability or that offend the honor or image of persons or attempt freedom of conscience, belief, religious cult or ideas and feelings worthy of respect and veneration;
4. designations or initials of public entities or agencies, when registration is not required by the public entity or agency itself;
5. reproductions or imitations of a characteristic or differentiating element of a title of an establishment or a name of a company belonging to third parties, likely to cause confusion or association with such distinctive signs;
6. signs of generic, necessary, common, ordinary or simply descriptive character, when related to the product or service to be distinguished, or those commonly employed to designate a characteristic of the product or service regarding its nature, nationality, weight, value, quality and time of production or rendering of the service, except when endowed with a sufficiently distinctive form;
7. signs or expressions employed only as a means of advertising;
8. colors and their names, unless arranged or combined in a peculiar and distinctive manner;
9. geographical indications, imitations thereof likely to cause confusion, or signs that may falsely induce a geographical indication;
10. signs that induce to a false indication regarding the origin, source, nature, quality or usefulness of the product or service to which the mark is applied;
11. reproductions or imitations of an official seal normally used to guarantee a standard of any kind or nature;
12. reproductions or imitations of a sign that has been registered as a collective or certification mark by a third party, with due regard to the provisions of Article 154;
13. names, awards, or symbol of a sporting, artistic, cultural, social, political, economic or technical event that is official or officially sanctioned, as well as an imitation likely to create confusion, unless authorized by the competent authority or entity that is promoting the event.
14. reproductions or imitations of titles, policies, coins, and paper currency of the Union, the States, the Federal District, the Territories, the Municipalities, or of a country;
15. personal names or signatures thereof, family names and patronymics, or the image of third parties, except with the consent of the titleholder, his heirs or successors;
16. well-known pseudonyms or nicknames, individual or collective artistic names, except with the consent of the titleholder, his heirs or successors;
17. literary, artistic or scientific work, as well as the titles protected by copyright and likely to cause confusion or association, except with the consent of the author or titleholder;
18. technical terms used in industry, science and art, that are related to the product or service to be distinguished;
19. reproductions or imitations, in whole or in part, even with an addition, of a mark registered by another party, to distinguish or certify an identical, similar, or alike product or service, likely to cause confusion or association with the other party’s mark;
20. XX. duality of marks of a single titleholder for the same product or service, except when, in the case of marks of the same nature, they are endowed with a sufficiently distinctive form;
21. the necessary, common, or ordinary form of the product or packing, or also that one which cannot be dissociated from a technical effect;
22. an object that is protected by a third party industrial design registration;
23. signs that imitate or reproduce, wholly or in part, a mark of which the applicant could not be unaware because of his activity, and whose titleholder is headquartered or domiciled in national territory or in a country with which Brazil has an agreement or that assures reciprocity of treatment, if the mark is intended to distinguish an identical, similar or alike product or service likely to cause confusion or association with that other party’s mark.

Application content:

The application must refer to a single distinctive sign and shall, subject to the conditions stipulated by the INPI, contain the following:

1. the application;
2. labels, if applicable; and III. proof of payment of the filing fee. Sole Paragraph. The application and any documents accompanying it shall be submitted in the Portuguese language, and if any document is in foreign language, its free translation must be submitted at the time of filing or within the following sixty (60) days, under penalty of not having the document considered.

Application process:

When the application has been submitted, it shall be subject to a preliminary formal examination, and if found to be properly documented, it shall be docketed, and the filing date of the application shall be considered as the date of submission.

Applications that do not formally comply with the requirements, but which contains sufficient data related to the applicant, the mark sign and its class, may be delivered, against dated receipt, to the INPI, which shall stipulate the requirements to be satisfied by the applicant within 5 (five) days, under penalty of being deemed non-existent.

After being docketed, the application shall be published so that opposition may be presented within a period of 60 (sixty) days. The applicant shall be notified of the opposition and may submit comments within a period of 60 (sixty) days.

After the period for opposition has elapsed or, if an opposition was presented, at the end of the period allowed for comments, the examination shall be done, and in its course demands may be formulated, and their responses must be submitted within a period of 60 (sixty) days.

When the examination has been concluded, a decision shall be handed down, either approving or rejecting the application for registration.

A certification of registration will be issued if the protection of the mark was accepted.

Refusal:

After the period for opposition has elapsed or, if an opposition was presented, at the end of the period allowed for comments, the examination shall be done, and in its course demands may be formulated, and their responses must be submitted within a period of 60 (sixty) days.

If an applicant does not respond to the demand, the application shall be definitively dismissed.

Rights of exploitation and related delay:

The property of a mark is acquired by means of registration, when validly granted pursuant to the provisions of this Law, and its exclusive use throughout the national territory is assured to the titleholder.

The titleholder of a mark or the applicant is further assured the right to:

1. assign his registration or application for registration;
2. license its use;
3. safeguard its material integrity or reputation.

The protection embraces the use of the mark on papers, printed matter, advertising, and documents related to the activities of the titleholder.

The titleholder of a mark may not:

1. prevent merchants or distributors from using their own distinctive signs along with the mark of the product, in its promotion and commercialization;
2. prevent manufacturers of accessories from using the mark to indicate the purpose of the product, provided that fair competition practices are followed;
3. prevent the free circulation of the product placed on the domestic market by himself or by another with his consent, except as provided in Paragraphs 3 and 4 of Article 68; and
4. prevent the mention of the mark in a speech, scientific or literary work, or in any other publication, provided it is done without commercial connotation and without detriment to its distinctive character.

The registration of a mark shall remain in force for a period of 10 years from the date of granting of the registration, and the period may be extended for equal and successive periods. The application for extension shall be made during the last year of the term of the registration, accompanied by proof of payment of the respective fee. If the request for extension is not made before the term of the registration, the titleholder may do so during the following 6 months, by payment of an additional fee.

Transfer and conditions:

The registration application and the registration may be assigned, provided the assignee satisfies the legal requirements for applying to register it. The assignment must comprehend all the registrations or applications, in the name of the assignor, for the same or similar marks, related to an identical, similar, or alike product or service;

Certification:

The registration certificate shall be issued after the application has been approved and proof of payment of the appropriate fees has been furnished. Payment of the fees, and its proof, related to the issue of the registration certificate and to the first decade of its term, shall be done within a period of 60 (sixty) days of approval.

The certificate shall contain the mark, the number and date of registration, name, nationality and domicile of the titleholder, the products or services, the registration characteristics and the foreign priority.

Withdrawal and cancellation:

The registration of the mark shall be extinguished:

1. on expiration of the term;
2. on renunciation, which may be full or partial regarding the products or services indicated by the mark;
3. on forfeiture: A registration shall be forfeited upon request by a person having a legitimate interest if, after 5 (five) years have elapsed since granting, on the date of the request:

-the use of the mark has not been initiated in Brazil; or

- the use of the mark has been interrupted for more than 5 (five) consecutive years, or if, in the same period of time, the mark has been used with a modification that entails alteration of its original distinctive character as appears on the registration certificate.

The nullity of the mark shall be pronounced if it is subject to grounf for refusal or contrary to any disposition of the law.

Customs protection:

Importation or exportation of a counterfeit good is considered as a crime against mark. Products bearing counterfeited, altered or imitated marks, or that show a false indication of source may be seized by customs authorities, ex-officio for at the request of the interested party, during verification procedures. Thus, in addition to the preliminary proceedings of search and seizure, the interested party may request:

1. seizure of the counterfeited, altered or imitated mark at the place where it is prepared or wherever it is found, before it is used for criminal purposes;

2. destruction of the counterfeited mark on the packets or products that contains it, before they are distributed, even if this implies the destruction of the packaging or of the products themselves.

Vincent Lagier