Frequently Asked Questions
Your counsel must present as soon as possible a Trademark Defense if you want to move forward with the registration process. We hardly advise you consult a professional trademark service like EB or trademark attorney familiar with brazilian law, as the Trademark Office is claimed to not register your mark by a third party that has challenged your mark believing your mark infringes on theirs.
Applicants are allowed to register the following marks:
- Well-known marks;
- Get-up or trade dress;
- Collective marks;
- Some three-dimensional shapes;
- Certification marks;
- Service marks.
Intellectual property law is limited to the country in which you registered your trademark as no country has jurisdiction over another. Therefore, to protect your business just like you ensure your house and your car from accident and theft is an important asset, as there are the fruit of your work and unique ideas.
Furthermore, if you sell online, export or do any international business your trademarked products or services are reachable internationally, thus we recommend you register a trademark in every country, territory, or jurisdiction where you offer your products and services, even to affords you legal protection and security in the event a dispute arises about the use of your mark in commercial endeavors in foreign countries. As without a registration in those territories, your trademark is not protected and can be used by other entities.
We advise our client to do the Trademark Comprehensive Study in order to avoid it, however, if objections or oppositions arise, EB relies on qualified trademark attorneys that will guide you in the course of action, plus:
- Communicate the details of the action to you as quickly as possible;
- Include Future-steps and possible arguments;
- Monitor deadlines and explain the costs to prepare and submit a response if needed.
Applicants may not register the following marks:
- Marks that contradict principles of morality and public safety/order;
- Generic words or terms;
- Flags, names, or symbols of any state, nation, or international organization;
- Marks that do not show distinctiveness;
- Marks that are used primarily as a geographical name;
- Marks with geographical indications;
- Marks that are used as an advertising means;
- Scientific, literary and artistic terms.
A priority claim is an allowance based on Article 4 of the Paris Convention for the Protection of Industrial Property.
It enables you as the owner of a filed trademark to file subsequent trademark applications in any of the Convention signatory countries using the effective date of your first application as long as you file the subsequent applications within six months of your original trademark application. That means if you apply for a trademark in Canada, five months later, you can apply for a trademark in France using the effective date of your Canadian application.
Unregistered marks may be used legally provided the following conditions are met:
- The mark is not prohibited by the Brazilian laws
- The mark is not in conflict with any notorious mark
- The mark is not contrary to Brazilian customs and principles of morality
- The mark is not offensive to religious beliefs
- The mark is not misleading with regards to its origin or nature
Plus, prior use of a mark for a minimum of 6 months can be cited as a ground for claiming a “right of precedence.”
The international trademark registration system is called the Madrid system or Madrid Protocol. It is administered by the World Intellectual Property Organization (WIPO) located in Geneva, Switzerland. Plus, it allows you to have a trademark protected in several countries by filing an application directly with your own member country, such as the United States, China, Germany, among others. The international mark registered with these countries is equivalent to an application or a registration of the same mark in countries you designate. The trademark office of the designated country must allow the protection of the mark.
However, Brazil, even signaling an interest in joining the Madrid Protocol, for its part, is not a signatory of the Madrid Protocol. That is because, an entry in Brazil would mean a change in Law No. 9,279, known as the Industrial Property Law.
If someone has the use of the mark, as well as a pending application or has a registered trademark, before you filing the request for registering it they do have priority.
Because Brazil is not a European Union member, the Community Trademark is not effective in this jurisdiction.
The average time frame for the registration approval is 30 months, if no objections or oppositions arise.
Yes. The Nice Classification system is followed in Brazil.
First of all, to avoid any objections or oppositions a Comprehensive Study will be conducted by an Attorney expert in Intellectual Property to ensure that an identical or similar trademark is not currently registered, plus an analysis will be conducted to make sure that the registration submitted is distinctive enough to obtain a trademark, which will suggest any recommendations if need.
Secondly, the Attorney will prepare and fill in the trademark application form and Submit The Trademark Registration Request, thus the authority from the Trademark Office will review the application and may allow the application to proceed to the publication phase, or may object to information contained in the application.
*In case the examiner objects to the application, the client will be notified immediately and informed what further action must be taken in order to proceed. It is important to note that the client will have around three months to formally oppose the registration.
Finally, the client receives the Certificate and has the right to use the ® symbol beside the trademark.
Using our Trademark Watch Service, also known as a trademark monitoring service. It will grant you to file a timely opposition by detecting any trademark request that is in the publication stage and that may infringe upon your trademark.
Therefore, to avoid conflicts with other trademarks EB provides you:
- 24/7 monitoring of published word marks which can be identical or similar, granted by a leading technological platform in intellectual property surveillance.
- Sending of relevant notifications to your email coupled with the steps and timeframes for presenting an opposition, if needed.
The cost of our Registration Request includes the official fees to submit the application to the local Trademark Office as well as the legal fees for reviewing, preparing and following up on your application and these are nonrefundable.
A Cease and Desist letter is known as a cost-effective way to protect your mark against unauthorized use, as taking legal action against infringers can be costly. Therefore, your attorney may mail a formal Cease & Desist letter to the infringing party in order to inform them of the trademark infringement and request that the offending party stops using the mark for business purposes.
In the following scenarios there is a possibility to claim priority:
-The application in the home country was filed 6 months earlier than the application date in Brazil;
-The applicant’s home country is a signatory of the Paris Convention.
An ownership transfer or assignment is when the owner of the trademark changes due to a transfer of rights, trade, donation, merge, etc, through a Trademarks Office.
Counting from the registration date it is going to be valid for 10 years, therefore to prevent the cancellation of a registered trademark you must maintaining your trademark rights through efficient renewals management.
Yes, this may be done:
- Change of name: this is applicable when the bylaws are amended and the company name changes, for example, a change in business name or entity type. The ownership of the trademark is not transferred from one entity to another; it remains under the same ownership, but with a different name.
- Change of address: the owner of the trademark changes the address.
- Change of attorney on file: the owner of the trademark changes the legal representative/attorney on file.
Besides the fact, both trademarks, patents, and copyrights offer protection for owners of intellectual property. The main difference is, the trademark protects the rights to exclusively use the image, logo, phrases, or words to distinguish the goods or a service in the market.
Thus, copyright is known to protect, per example, artistic or musical published, performed, or printed creative works from someone copying what they do. Copyright protection protects any original creative works of authors including:
- Artwork (2 or 3 dimensional),
- Photographs, graphic drawings, and designs as well as other forms of creativity;
- Songs, music, and sound recordings of all kinds;
- Books, manuscripts, publications, and another written work; and
- Plays, movies, shows, and other performance arts.
Meanwhile, a patent safeguards tangible invention, innovative product, device, or process that offers new solutions to a problem, giving the creator or inventor exclusive rights that prevent other people from making, using, or profiting in any way from an invention or creative innovation without the consent of the inventor.
You have 6 months to restore the mark after the renewal date has expired.
Yes. The opposition is available on the following grounds:
- Proprietary right
- Mark is descriptive
- Mark is not distinctive
- Mark is misleading or deceptive
- Breach of copyright
- Rights of notorious marks
- Rights of trade names
- Rights under Article 6 septies of the Paris Convention
- Rights in the registered design
- Rights in a personal name
- Rights in a company name
- Unauthorized use of protected emblems or national insignia
Once you have your company’s trademark registered you’ll have the rights below:
- Right to bring cancellation to later conflicting registrations;
- Right to oppose later conflicting applications;
- Right to request for the seizure of counterfeit goods;
- Right to file an infringement case against third parties for using a confusingly similar mark;
- Right to license third parties to use the mark;
- Right to receive damages for infringement;
- Exclusive right to use the mark.
Unfortunately, the Brazilian trademark is only valid in Brazil.