A Panoramic View Of Trademark Registration In Brazil

The current Industrial Property Law, No. 9279/96, has been in

force in Brazil for over a decade. Generally speaking, the Law is

modern and in line with the principles of international treaties

such as TRIPS and the Paris Convention.

In seeking registration of a trademark in Brazil it is important

that potential registrants should be aware that there is no need to

show "intent-to-use" the trademark. Rights only accrue on

registration and up until that time the applicant only has an

expectation of securing those rights. Furthermore, Brazil adopts

the first-to-file principle, although Article 129(1) provides an

exception for a party who has been using the same or similar mark

in good faith for at least 6 months before the filing of an

application.

Any private natural or legal person can file an application to

register a trademark, (Article 128), although a foreign entity must

retain a properly qualified attorney domiciled in Brazil with

powers of representation (Article 217). The law also states, that

the applicant must affirm in the application form, under penalty of

law, that it effectively and legally exercises the goods or

services identified by the trademark.

Trademarks are defined as "visually perceptive distinctive

signs" (Article 122) encompassing words, logos,

three-dimensional and composite marks. Product, service,

certification and collective marks are registrable, however there

are no express provisions regarding smell or sound marks.

Goods and services in Brazil are classified according to the

current Nice Classification of Goods and Services which Brazil

adopted on January 1, 2000. Multi-class applications are not

permitted. Interestingly, trademarks on the register before 2000

are still classified according to the previous Brazilian

Classification system.

Article 124 is explicit regarding what cannot be registered as a

trademark and this includes copyrighted works, commercial names,

generic or descriptive marks, advertising slogans, colors,

reproductions or imitations of a mark registered by a third party

covering a product or service that is identical or similar likely

to cause confusion or association.

Once an application is filed and a formal preliminary

examination is completed, a trademark is published in the Official

Bulletin (up to 2 months when filed online or longer if filed on

paper forms). This publication allows interested third parties a 60

day period to oppose the application. If an opposition is filed,

this fact...