Easier Said Than Done: The Peculiarities of the Trademark Registration System in Brazil
At first glance it might appear that registering a trademark in Brazil is a simple task. There is a certain level of harmonization within IP Laws and the basic steps, such as filing an application, awaiting the PTO analysis, paying the registration fees and securing the registration itself, tend to be very similar.
However, there is a long way between to go between the development of a trademark and its effective protection and there are some aspects of the Brazilian trademark registration system that could trip up someone without sound knowledge of the path, or even present unsurmountable obstacles.
The two most important things to be know relate to how trademarks rights are acquired in Brazil and the performance, or lack of performance, of the Brazilian PTO.
So, first things first.
Brazil is a first to file country and trademark rights are acquired upon registration.
The relevance of this information is that failing to register a trademark at the earliest stage possible, may cause serious problems as a third party may beat the rightful owner of the trademark in securing a registration, Subsequent fighting over said registration may be very frustrating, costly and time consuming. Accordingly, if Brazil is a market of interest, a local application should be filed as soon as possible and such filing should always precede the local launch of the corresponding product or service.
The second most relevant aspect refers to the never-ending backlog of work of the Brazilian PTO and the consequent delays in the prosecution of trademark applications.
In this connection, it should be noted that Brazil is still one of the slowest countries in Latin America in relation to trademark registration and is really far behind its neighboring countries. The current backlog of applications awaiting examination before the Brazilian PTO is four hundred and fifty thousand and each year over one hundred and fifty thousand new applications are filed.
As a consequence, the average time for securing a trademark registration in Brazil is around 30 months, even if no obstacles are encountered throughout its prosecution. If an opposition is filed or a rejection decision is issued, trigerring the filing of an appeal, the time of analysis can go up to between six to nine years.
Given the above, conducting searches before filing trademarks is strongly recommended.
In our fast track world, no company can wait so many years to launch a new trademark and a trademark search allows the company to ascertain if there are likely to be any obstacles. It also allows preventive actions to try to overcome or minimize such obstacles.
The search also allows the identification of potential rejection decisions on the basis of absolute grounds, such as common meaning or descriptiveness. The criteria of analysis of the Brazilian PTO in rendering rejection decisions on absolute grounds is extremely restrictive and marks that are allowed in many other jurisdictions are often rejected in Brazil.
In addition to the above, the following are a few peculiarities of the Brazilian IP Law which are also relevant and strategic for any company with interest in the Brazilian market.
Unlike in countries which adopt acquisition of rights through use and which actually require use before granting a trademark registration, in Brazil, no proof of use is required either for the filing of an application nor even for the granting or renewal of the corresponding registration.
However, a registration becomes vulnerable to cancellation on the grounds of non-use, by request of a third party with legitimate interest, if use is not initiated within five years of its grant or is discontinued for more than five years afterwards.
It should be noted that if a trademark is used in a different format than the one it was granted it can be cancelled on the grounds of non-use. Accordingly, marks filed and granted with a composite presentation must be used with the same composite presentation and marks filed and granted with a claim of colors must be used with the exact same colors.
On the other hand, marks filed in a word format can be used with any presentation and marks filed in black and white might also be used with any combination of colors. So, if the composite presentation or the colors to be claimed are not strategic to your company/client it is always better to leave these elements behind and file in the word format to get a broader scope of protection.
It is also relevant to know that multiclass applications are not allowed in Brazil. Despite the fact that the permission of multiclass applications have been on the PTO’s radar for over a decade it is impossible to predict when this change will came into effect. So, for the time being, a strategic analysis of the trademark portfolio is necessary to determine which classes are necessary.
Finally, and to add a positive perspective to the Brazilian trademark registration process, it should be said that the Brazilian PTO has improved its performance over the last decade. During this period it has reduced in half the time of analysis of an application, it has simplified the filing system by allowing electronic filings and by allowing the presentation of simple documents such as power of attorneys without legalization and simple extracts of databases to support priority claims. It has also opened a channel of communication with its users throughout an ombudsman on-line tool which is rather effective in the solution of minor problems
All things considered, bearing in mind that Brazil is a top 9 GDP country (according to the UN) with over 205 million consumers and, as such, is not a market that can be ignored by major multinational companies, knowing the peculiarities of the local IP law as well as the crux of the registration process is definitely the first step for securing effective local protection.