Brazil is among the five countries that signed The Protocol in 1995. The Protocol has not yet been approved by the respective National Congresses as is necessary to make the provision effective in each country.
Who May Apply?
Generally, the earlier applicant should be entitled to registration, since Brazil has adopted the first to file system. It is necessary that the applicant be effectively engaged in the field of activities to which the products/services belong. Such activity may be either directly or indirectly (holding companies) exercised. However, it is not necessary to provide any documentation to this effect. A simple declaration by the applicant or his/her legal representative, made in the application itself is sufficient. Any person who, in good faith, at the date of priority or the date of application, has been using in Brazil an identical or similar mark for at least six months to distinguish or certify an identical, similar, or related product or service has preferential rights to registration.
What Can Be Registered?
All visually perceptible signs, if not prohibited by law, are eligible for registration. Word marks (plain block letters)- formed by one or more words or by the combination of Roman letters and Roman or Arabic numerals. Device marks- formed by drawings, pictures, emblems, or other types of graphic signs, exclusing Roman letters and Arabic or Roman numerals. Sufficiently stylized Roman letters and Arabic or Roman numerals may be device marks or advertising devices. Device marks or advertising devices may not be accompanied by word elements. Composite marks- composite marks consists of the combination of word elements and device dlements which cannot be included in the prior provisions. Distinctive packaging or shape of a product can be registered, except when it cannot be dissociated from its technical effect. Also, civil names, company names, artistic works, such as characters, as well as their titles protected as copyright can be registered upon express authorization of their owner. Similar marks may be registered, with the consent of the owner of the senior mark or application, if BPTO raises no objection.
What Cannot Be Registered?
Coats of arms, armorial bearings, medals, flags, emblems, badges, and official, public, national, foreign, or international monuments as well as any designations, figures, or imitations thereof. Isolated letters, numbers, and dates, except when sufficiently distinctive. Expressions, figures, drawings, or any other signb contrary to morality and decency, or which offend the honor or image of a person, or which offend freedom of conscience belief, religious cult, or ideas and feelings worthy of respect and veneration. Designations or initials of public entities or agencies, where registration is not required by the public entity or agency. Reproductions or imitations of a characteristic or differentiating element of a title of an establishment or a name of an enterprise belonging to another party, likely to mislead or cause confusion with such distinctive signs. Signs of a generic, necessary, common, ordinary, or simply descriptive nature when related to the product or service to be distinguished, or those commonly used to desginate a characteristic of a product or service regarding its nature, nationality, weight, value, quality,m and time of production or providing of a service, except when presented in a sufficiently distinctive form. Signs or expressions used merely as a means of advertising. Colors and names of colors, except where arranged or combined in a distinctive way. Geographical indications, or imitations of such indications, which are likely to mislead consumers, or signs that might wrongly suggest a geographical indication. SIgns inducing false indication regarding the origin, source, nature, quality, or usefulness of the product or service to which the mark is applied. Reproductions or imitations of official seals normally used to guarantee a standard of any type or nature. Reproductions or imitations of official seals normally used to guarantee a standard of any type or nature. Reproductions or imitations of signs registered as collective or certification marks by another party. Collective or certifcation marks which have already been used and for which the registrations have lapsed may not be registered in the name of another party before the five-year period from the lapse of the registration has expired. Names, prizes, or symbols of official or officially recognized sporting, artistic, cultural, social, political, economic, or technical events or imitations likely to cause confusion, except when authorized by the competent authority or entity promoting the event. Reproductions or imitations of titles, bonds, coins, or bank notes of the union, states, federal distrcit, territories, municipalities, or any country. Personal names or signatures, family names and surnames, and images of third parties, except with the express consent of the titleholder, heirs, or successors. Widely known pseudonyms, nicknames, or singular or collective artistic names, except with the consent of the owner, his or her heirs, or his or her successors in title. Literary, artistic, or scientific works, as well as titles protected by copyright and likely to mislead or cause confusion, except with the consent of the author or owner. Technical terms used in the industry, science, and art related to the product or service to be distinguished. Reproductions or imitations, in whole or in part, even with additions, of a mark registered by another party to distinguish or certify a product or service which is identical, similar, or related and which are likely to cause confusion or association with another person's mark. Duplicative marks of the same owner for the same goods and services, except marks of the same nature if they are presented in a sufficiently distinctive manner. The necessary, common, or usual shape of a product or packaging, and shapes that cannot be disassociated from a technical effect. Objects that are protected by an industrial design registration owned by third parties. Signs that imitate or reproduce, in whole or in part, a mark which the applicant could not fail to have knowledge of in view of his or her activities and for which the mark owner is established or domiciled on the national territory or in a country with which Brazil has an agreement or affords reciprocal treatment, if the mark is intended to distinguish a product or service that is identical, similar, or related, and likely to cause confusion or association with the mark of such other person.
Official application form, in triplicate, with detailed specification of the goods or services, as well as a statement of applicant's business activity. A power oif attorney, simply signed by a legal representative of the applicant (no notarization or legalization required). 15 prints of the mark, for composite or device marks (prints are not required for word marks; however, unless word marks are typed in capital letters, they will be considered composite marks). The applicant must be effectively engaged in the field of activities to which the products/services belong; however, it is not necessary to submit any document in this connection- it is enough that the attorney or applicant states in the application form that the applicant is engaged in such activities. Appointment of a local attorney by nondomiciliaries is mandatory. Payment of official filing fees.
Evaluation & Review
Applications are filed at the Brazilian BPTO. A prelimiary examination determines whether the application meets all legal requirements and whether there are any grounds for refusal or conflicting prior marks.
The registration lasts for a term of 10 years from the date of issuance and may be renewed for successive and similar periods. Renewals may be applied for during the last year of registration, with payment of regular fees. Late renewals are allowed within a six-month period after the expiration of registration, upon payment of an additional fee.
Marks must be used in substantially the same form shown in the registration certificate. There is no use requirement in Brazil for the filing of an application or for the issuance of a registration, or for the renewal of a registration. However, after issuance of the registration, its owner must never refrain from using it for a period longer than five years or it shall be vulnerable to cancellation requests based on lack of use if a forfeiture request is filed by any interested third party. The use of a mark must comprise all products or services descrived in the certificate, under penalty of partial forfeiture of the registration with respect to the products or services that are not smiliar or related to those for which the use of the mark was proven. In the case of licensing, recording a licensing contract with the BPTO is not mandatory to show proof of use.
The registration of domain names is available before the Brazilian domain name registrar, "FAPESP." Companies duly established in Brazil are entitled to register domain names. However, foreign companies still rely on reigstration through local subsidiaries, domain name specialized companies or intellectual property offices, or other alternatives. An annual maintenance fee applies to all domain name registrations. The registrar typically refuses registrations for well-known marks unless the registration is sought by the mark owner. When a mark is recognized as highly reputed, the Patent and Trademark Office sends an official notification to the Brazilian Domain Names Registrar to support the examination of applications for domain names that may include the mark. Although there is no express reference to domain names in the Brazilian Industrial Property Law, such law brings several unfair competition provisions that may be applied to domain name disputes.
Trademark infringement is both a criminal and a civil tort and anyone who, without authorization, reproduces or imitates a registered mark in a manner to cause confusion among consumers or int the market is liable to imprisonment and payment of a fine. In case the crime is committed, however, by importing, exporting, sale, offer for sale, hiding, or having in stock the product covered by the infringing mark, the penalty may be reduced. In civil proceedings, it is possible to obtain before civil courts all kinds of seizures, injunctions, preliminary relief, etc., foreseen in the Code of Civil Procedure. Actual damages should be calculated on the basis of the actual losses suffered and lost profits according to the criteria most favorable to the plaintiff among the following: the benefits he or she would have obtained if the infringement had not occured, the benefits obtained by the infringer, or a reasonable royalty payment.