ICLG Trademarks 2017

1 RELEVANT AUTHORITIES AND LEGISLATION

1.1 What is the relevant trade mark authority in your jurisdiction?

The relevant authority is the Brazilian Patent and Trademark Office ("BPTO"), also referred to as the National Institute for Industrial Property (Instituto Nacional da Propriedade Industrial - "INPI", in Portuguese).

1.2 What is the relevant trade mark legislation in your jurisdiction?

The relevant legislation is as follows:

Decree No. 1,263 of October 10, 1994 - ratifying the Paris Convention for the Protection of Industrial Property as last revised at Stockholm; Decree No. 1,355 of December 30, 1994 - ratifying the TRIPS Agreement; and Law No. 9,279 of May 14, 1996 - the Brazilian Industrial Property Act. 2 APPLICATION FOR A TRADEMARK

2.1 What can be registered as a trademark?

All visually perceptible distinctive signs, when not prohibited by law, are eligible for registration as a trademark, pursuant to Section 122 of the Brazilian Intellectual Property Act ("Brazilian IP Act"). As such, word, figurative, composite and 3D forms are registrable; however, "non-traditional" marks, such as musical jingles or colours, are not allowed in Brazil.

In any event, to reach registration a trademark must fulfil the basic requirements of relative novelty, veracity and distinctiveness.

2.2 What cannot be registered as a trademark?

The following are statutorily barred from registration under the Brazilian IP Act:

crests, armorial bearings, medals, flags, emblems, distinctions and monuments, as well as their respective names, representations or imitations, when they are of an official or public character, whether they are national, foreign or international; an isolated letter, numeral and date, unless displayed in a sufficiently distinctive form; an expression, representation, drawing or any other sign that is contrary to [accepted principles of] morality and good conduct or is offensive to a person's honour or image, or is an affront to the freedom of conscience, belief, religious cult or ideas and feelings worthy of respect and veneration; the designation or acronym of a public entity or agency, unless registration is applied for by the public entity or agency itself; the reproduction or imitation of the characteristic or distinguishing element of a third party's title of establishment or company name, liable to cause confusion or association with such distinctive signs; generic, necessary, common, usual or simply descriptive signs, when they are related to the products or services they identify, or those commonly used to indicate a characteristic of the products or services regarding their nature, nationality, weight, value, quality and time of production or rendering of a service, unless displayed in a sufficiently distinctive form; signs or expressions used merely as a means of advertising; colours and their names, unless displayed or combined in a unique and distinctive manner; a geographical indication and its imitation liable to cause confusion, or a sign that may falsely lead to a geographical indication; a sign that leads to a false indication as to origin, source, nature, quality or utility of the products or services for which the mark is intended; the reproduction or imitation of an official hallmark regularly used to guarantee a standard of any kind or sort; the reproduction or imitation of a sign that has been registered as a collective or certification mark by a third party, with due regard to the provision of Article 154; the name, award or symbol of an official or officially recognised sporting, artistic, cultural, social, political, economic or technical event, as well as an imitation liable to create confusion, except by authorisation of the competent authority or entity promoting the event; the reproduction or imitation of a title, policy, coin and paper currency of the Union, the States, the Federal District, the Territories, the Municipalities or of any country; the legal name or corresponding signature, family name or patronymic and the image of third parties, except by consent of the owner, his heirs or successors in title; well-known pseudonyms or nicknames and individual or collective artistic names, except by consent of the owners, their heirs or successors in title; literary, artistic or scientific works, as well as titles that are protected by copyright and are liable to cause confusion or association, except by consent of the author or owner; technical terms used in industry, science and art that are related to the products or services they identify; the reproduction or imitation, either wholly or in part, even with additions, of another person's registered trade mark to distinguish or certify identical, similar or related products or services liable to cause confusion or association with the other person's mark; the duality of trade marks in the name of a single owner for the same products or services unless, in the case of marks of the same nature, they are displayed in a sufficiently distinctive form; the necessary, common or usual form of a product or packaging, or a form that cannot be dissociated from a technical effect; an object that is protected by registration as an industrial design in the name of a third party; and a sign that imitates or reproduces, either wholly or in part, a trade mark which the applicant clearly could not be unaware of as a result of his activity, in the name of a person established or domiciled in Brazilian territory or in a country that is bound to Brazil by agreement, or that assures reciprocity of treatment, if the mark is intended to identify identical, similar or related products or services liable to cause confusion or association with the other person's mark. 2.3 What information is needed to register a trade mark?

In addition to the basic filing requirements, such as the trade mark and goods and services claimed, the applicant must provide the following information:

priority number and date, if applicable; declaration confirming that the products or services applied for are related to an activity in which the applicant is effectively and lawfully engaged; Power of Attorney; and colour claim, if applicable. Both the priority document and the Power of Attorney may be filed later (four months and 60 days, respectively) as long as a supplemental deadline is requested when the application is filed.

2.4 What is the general procedure for trademark registration?

Once the application is filed, the BPTO will assign a serial number and perform a formality check, which consists of confirming that all the relevant information has been correctly provided by the applicant on the filing form (adequate representation of the trade mark, priority number, attorney of record, declaration of activity and other documents that may have been submitted). If the application meets the minimum filing requirements, it will be published for opposition purposes in three to four weeks from filing.

Interested third parties will then have 60 days to raise objections and file oppositions (no extensions of time are allowed). If an opposition is filed, a notice will be published and the applicant will have an unextendable 60-day term to submit a response.

The examination of the application (including reviews on both absolute and relative grounds) will only be carried out by the BPTO after the deadlines relating to opposition proceedings expire. Roughly three years from the filing of the application, the BPTO will publish its decision on the registrability of the trade mark, either allowing or rejecting registration. If an application is allowed, the applicant will have a 60-day term to pay the final issuance fees, whereas, if rejected, the same deadline will be triggered for the filing of an appeal.

When granted after payment of the issuance fees, the registration will be published in the Official Bulletin and the corresponding Certificate will be provided electronically by the BPTO within approximately two months. It is not necessary to inform intent-to-use at any time.

2.5 How can a trade mark be adequately graphically represented?

There are no rules for representing word trade marks, which must simply be typed in the application filing form. For adequate graphical representation of composite and device trademarks, the applicant is required to inform the applicable classes from the International Classification of Figurative Elements of a Mark.

Regarding 3D trademarks, the applicant is required to present an attachment with the posterior, anterior, top, bottom, sides and perspective views. For applications claiming the protection of colour schemes, an internationally recognised colour code is not required and the applicant must simply present prints (samples) of the trade mark in colour.

2.6 How are goods and services described?

Goods and services can be described according to the general description of the Nice Classification, or with a more specific description, depending on the applicant's interest. Given that intent-to-use is not required, it is permissible to claim whole class headings. However, the goods and services claimed must be related to the activity in which the applicant is effectively and lawfully engaged.

2.7 What territories (including dependents, colonies, etc.) are or can be covered by a trade mark in your jurisdiction?

Rights over a trademark are acquired by means of a registration and will have effect only within the Brazilian territory.

2.8 Who can own a trade mark in your jurisdiction?

In Brazil, a trade mark may be owned by natural persons and legal (juristic) persons under public or private law, such as corporations, partnerships, joint ventures, unions, associations, and any other entity capable of being represented in a court of law.

For collective or certification marks, the application can only be filed by a legal person who, respectively, represents the collectivity or has no direct commercial or industrial interest in the certified...