Claiming Your Spot in Brazil's Market: A Trademark Guide

Brazil is a marvel. From its cultural depth in samba dances and Rio carnivals to its creative jars in caipirinhas. From the most emotive football battles (yes, not matches - you needed to be there) to the richest culinary diversity in the feijoadas, northern moquecas, and southern churrascos. Brazil is protected. Brazilians value protection. 

The concept of protection is so embedded in the national fabric that they immortalized it in a 98-foot-tall, 92-foot-wide, reinforced concrete monument covered in Brazilian soapstone, perched 2326 feet above sea level on the Corcovado mountain - Christ the Redeemer. Their immortal God stands as a towering symbol of protection over Rio, over Brazil, at the tallest spot, shielding them from all dnger, from all harm. 

This concept of protection and emotive battling extends to the Brazilian commercial sphere. Just like Christ the Redeemer ensures the protection of the citizens of Rio, businesses go above and beyond to protect their brands. 

If you're looking to build a successful business in Brazil, you must protect it. Trademarking your brand ensures it's protected from market confusion, legal challenges, counterfeiting, and fraud. 

This article is about you, your business, its brand, and why you need to protect that brand by registering your trademark. We hope to guide you through the trademarking process in Brazil, the pitfalls to avoid, and explain why Trademarkia is your best choice.

What is a trademark?

“A trademark in Brazil is a visual distinctive sign used to distinguish a business and/or its service/product from their competitors. This sign must be registered to receive protection, as Brazil is a first-to-file country.” - Tatyana Constancio Nunes de Lima, Trademarkia Brazilian Lawyer. 

Brazil's Industrial Property Law defines a trademark as a registered distinctive sign that identifies the origin of a product or a service and distinguishes it from similar or related products or services of a different origin.

In Brazil, trademarks can take the following forms:

• Nominative trademark: This can be either a word mark or a verbal mark. It's a sign made up of one or more words in the broad sense of the Roman alphabet. It also includes neologisms and combinations of letters and Roman or Arabic numerals. These elements should not be presented in a fanciful or figurative form. 
• Figurative trademark: This can be a drawing, image, figure, and/or symbol; any fanciful or figurative form of a letter or number alone or accompanied by a drawing, image, figure, or symbol; words composed of letters from alphabets other than the vernacular language, such as Hebrew, Cyrillic, or Arabic; ideograms, such as Japanese and Chinese.
• Mixed trademark: This is a sign made up of a combination of verbal and figurative elements or even just verbal elements whose spelling is presented in a fanciful or stylized form.
• Three-dimensional trademark: This is a sign consisting of a distinctive plastic form in itself, capable of individualizing the products or services to which it is applied. A good example is the Coca-Cola bottle.

A registered trademark sets your products apart from competitors. It also safeguards your brand against fraud and counterfeiting. It helps customers recognize your products and services. It also gives you the legal right to stop others from using a similar mark. 

What is the process of registration?

The Instituto Nacional da Propriedade Industrial (INPI) is responsible for the registration and management of all forms of industrial intellectual property in Brazil, including trademarks. 

The process of registering a trademark in Brazil can be frustrating for beginners, laypersons, and non-Portuguese speakers due to its complexity. In light of this complexity, we've broken down the entire registration process into key steps below:

Step 1: Selecting a registrable name

For a mark to be registered by the INPI and gain legal protection, it must be new in relation to the goods or services in that market. It also needs to make a clear distinction between your goods or services and others.

Not all marks are registrable. When choosing a mark, be careful not to pick one from the categories below:

• Signs used as a means of advertising. 
• Signs contrary to moral and good customary standards or which offend the honor and the image of people. 
• Common generic terms are incapable of distinguishing one brand from another, such as "books" for a book company.
• Descriptive marks that describe the purpose or quality of a product, such as "good book" for a book company.
• Names, acronyms, flags, emblems, monuments, medals, or symbols of states, nations, regions, governmental entities, or international organizations. 
• Reproduction or imitation of distinctive element(s) of a third party's trade name that may cause confusion or association between them. 
• Colors and their names, except when arranged or combined in a distinctive manner.
• Signs that induce a false idea of origin, nature, quality, or utility of the good or service. 
• Signs which reproduce or imitate a Geographical Indication. (e.g.: Champagne, Cognac, Bordeaux etc.).
• Patronyms, names, and images from a third party, unless accompanied by consent.

Selecting a registrable name is very important in securing a trademark for your brand. And some brands had to learn this the hard way.

The "Cupuaçu" trademark dispute:

A Japanese company named Asahi Foods once tried to register "Cupuaçu" (a native Brazilian fruit) as a trademark for exclusive use. This caused controversy because cupuaçu is a common name for a fruit in Brazil. After legal and public pressure, the trademark was revoked.

Step 2: Selecting the right classification for your mark

The INPI applies the Nice Classification System when processing trademark applications to ensure consistency with the international trademark classification standards. This system is recognized globally. It simplifies how goods and services are classified for trademark registration. 

There are a total of forty-five classes. The first thirty-four talk about goods, and the last eleven are for services. The class you choose for a trademark depends on the goods or services you want to protect. 

Finding the right class can be tough for beginners and first-time applicants. At Trademarkia, our attorneys can assist you in choosing the right options. They will ensure your business is protected from every angle. We have also worked on a detailed Nice Classification System Guide that might assist you in your decision-making. (We also have an in-house Brazilian attorney with whom you can book a consultation.)

This guide applies to all jurisdictions that have adopted the Nice Classification System into their internal trademarks regime, including Brazil.

Selecting the wrong classification or insufficient classifications for your mark can be fatal in the trademark world. 

Step 3: Conducting a search

In order to ensure that your mark is unique to your products or services and that it's not already being used by another business, it's important to conduct a thorough search of the intended mark. 

In Brazil, the trademark database search curated by the INPI allows you to conduct a free search before registration. In order to utilize this database, you have to be a registered user with valid login credentials. You can conduct a search by using the search by process number option, search by trademark option, or search for trademarks assigned to a specific owner. 

You can also conduct a search by perusing the Electronic Journal of Intellectual Property. Since marks are categorized into classes, it's crucial to identify the applicable Nice Classification classes for your goods or services and search within those classes.

For broader coverage, you should also consider expanding your search to international databases such as the WIPO Global Brand Database so as to get insights into similar marks registered in other jurisdictions. 

It's worth noting that searches in these databases can be limited, especially in the INPI database. At Trademarkia, we conduct a comprehensive search performed by our in-house Brazilian attorney, including an assessment of the likelihood of success, as part of our services before filing.

Step 4: Preparing your trademark application

Once you're sure that your mark is unique and distinctive, you need to gather all relevant and necessary information and documentation required by the INPI to register your mark - this includes:

• Trademark registration application form. 
• The applicant's full name, address, and contact information. If applying as a company, ensure the registered business name and address match your Companies House records.
• A statement identifying the appropriate classes associated with your goods or services.
• Payment receipt.
• Digital image of the trademark (if any).
• Power of Attorney (if using an agent/lawyer). If you're applying through a trademark attorney, a signed authorization letter may be needed.
• Documents in support of a priority claim (if any). If you've applied for the trademark in another country, you can claim priority under the Paris Convention.
• Characteristics of the product or service subject to certification and control measures (certification mark).
• Regulation on use (collective mark).

Step 5: Lodging your application

To submit your trademark application, you need to register with the e-INPI System, which provides access to the services of the Directorate of Trademarks. The registration is compulsory for individuals and entities that wish to benefit from the services of INPI. Here is a guide on completing the e-INPI registration form.

After registering in the system, you have to pay the Brazilian Federal Revenue Collection Slips (GRUs) for the services provided by INPI (tax). This must be paid before submitting the trademark application form. 

Once the GRU payments have been made, you can submit your application through one of the following three ways: 

1. In-person, using the trademark registration form in paper format, which is available to print on the INPI website. This must be personally delivered to the headquarters of the organization in Rio de Janeiro or to any of INPI's branches in other Brazilian states.
2. By post, through submitting the trademark registration form in paper format by ordinary post.
3. Online, by filing the trademark registration form through the INPI e-Marca platform.

Once your application is lodged, the INPI will begin examining your application.

Step 6: Formal examination 

At this stage, the Directorate of Trademarks examines your application to check whether it satisfies the requirements of the Industrial Property Law on distinctiveness and registrability. The examination includes carrying out a search of earlier trademarks. If the requirements for registration aren't met, you'll be informed and given an opportunity to amend the application within five business days.

During formal examination, your application is assessed to check whether there are any discrepancies between the data you have provided regarding the trademark and its presentation. The main essence of this stage is to ensure that the trademark is published correctly.

If you fail to amend the application as directed or fail to respond to the request to amend within the period specified in the request, the registrar will reject your application. However, if the requirements for registration are met, then the application shall be accepted.

Step 7: Publication and opposition

If your application is free of any defects or inconsistencies, it's published in the Industrial Property Magazine for a period of 60 days to allow filing of oppositions.

Any person may give notice of their opposition to the registration to the registrar. The notice should be in writing and must include a statement of the grounds of opposition. Most oppositions are normally based on factors such as similarity or claims that the trademark applied for might be misleading or generic.

Should you be faced with an opposition notice, you can handle it by negotiating with the party raising the opposition. This would involve you making concessions, such as tweaking your proposed mark. You can also address an opposition by providing evidence proving that the proposed mark is unique. In case things get out of hand, it's crucial that you hire a lawyer.

Step 8: substantive examination

At this phase, your trademark is examined to confirm whether it meets the following criteria:

• The mark consists of a visually perceptible sign.
• The mark is distinctive and identifies your products and services from others of a different origin.
• The mark is free from any legal prohibitions by virtue of its own constitution, lawfulness, veracity, or availability. 

It's at this stage that the Directorate of Trademarks will also assess all oppositions filed and determine whether they are merited. Mandatory documents will also be analyzed at this stage. These documents include Power of Attorney, priority claim documents, regulations for the use of collective marks, and technical documentation for certification marks.

If your trademark application doesn't satisfy the examiners on any of the above grounds, it will either be rejected, deferred, partially rejected, suspended, or partially deferred. If it satisfies all the checks, it will be registered. Please find a detailed substantive examination guide from the INPI that can help you understand this process better.

Step 9: Registration

If your application passes the substantive examination stage, and no opposition was raised, or the raised oppositions were determined in your favor, and you have paid the fee for the first ten years of registration, you will be issued with a certificate of registration implying exclusive rights to the use of the registered trademark.

Now that you have your trademark, what next?

As I stated earlier, protection and vigilant battling is a Brazilian thing. Once your trademark has been registered, you have to keep watch and protect it against infringement. The Brazilian Intellectual Property journal is published every week. You have to peruse it as often as you can to ensure no recent applications threaten your registered trademark.

Trademarks in Brazil enjoy protection for a period of ten years from the date of registration. When this period lapses, you must renew your trademark in order to sustain the legal protection it provides. It's advisable to renew your trademark before the lapse of the ten years. The INPI allows trademark owners to renew their trademarks at the beginning of the 10th year. It's important to set automated reminders to avoid missing renewal deadlines. 

Don't sit pretty

In Brazil, protection is an intrinsic part of the national identity. Just as Christ the Redeemer towers at the height of Corcovado, with outstretched arms an unwavering symbol of a guardian over Rio de Janeiro, your trademark should tower over your brand with such poise, such convocation, embodying an unyielding spirit of steadfast defense. 

To do business in Brazil means welcoming a culture that values passion, resilience, and protection both on the streets of Rio and within the courts of commerce. Trademark disputes in Brazil are far from mere legal skirmishes, they're battles. They are battles fought with the same zeal, passion, and intensity as a Gremio versus Internacional derby. If your business must thrive here, registering your trademark isn't enough, you have to defend it with conviction and finality.

Surrounding yourself, your business, and your brand with experienced trademark professionals is the perfect first step. Your entire trademark application journey needs to be flawless and infallible. From name selection to class selection - from searches to opposition responses. These processes need experts who can navigate Brazilian trademarks. We suffer the risk of belaboring this fact - at Trademarkia, we can help.  

Additional resources

• How Online Trademark Monitoring Can Prevent Brand Infringement
• Common Mistakes to Avoid when Registering a Trademark 
• Understanding Trademark Distinctiveness and its Importance

Glossary of legal terms

• Counterfeiting: The unauthorized production and sale of imitation products bearing a registered trademark intended to deceive consumers and undermine the original brand's reputation.
• Coexistence agreement: A legal arrangement between two parties with similar trademarks that allows both to operate in the same market without causing consumer confusion, typically by establishing distinct usage parameters.
• Descriptive mark: A trademark that merely describes the characteristics, qualities, or features of a product or service. Such marks are often considered non-distinctive and may be denied registration unless they have acquired distinctiveness through extensive use.
• Distinctiveness: The quality of a trademark that makes it easily recognizable and capable of distinguishing the goods or services of one enterprise from those of another. High distinctiveness is essential for successful trademark protection.
• Electronic Journal of Intellectual Property: An official publication by the Brazilian National Institute of Industrial Property (INPI) that contains public notices about trademark registrations, oppositions, and other relevant legal updates in the field of intellectual property.
• Generic term: A common name for a type of product or service that cannot be exclusively claimed as a trademark because it is widely used in everyday language. Generic terms are not protectable under trademark law.
• Industrial Property Law: The body of law governing the protection of intellectual property rights related to industrial assets, including trademarks, patents, and industrial designs. In Brazil, this law sets the framework for registering and defending trademarks.
• INPI (Instituto Nacional da Propriedade Industrial): Brazil's National Institute of Industrial Property, responsible for processing trademark, patent, and industrial design applications and enforcing intellectual property laws in Brazil.
• Nice Classification System: An internationally recognized system that organizes goods and services into 45 classes for the purpose of trademark registration. This system helps standardize trademark filings across different jurisdictions.
• Non-traditional trademarks: Marks that don't fall under the typical visual or textual categories. Examples include trademarks based on sound, smell, movement, or other non-traditional elements, which are often protected through separate legal avenues such as unfair competition law.
• Opposition: A formal challenge initiated by a third party during the publication phase of a trademark application, arguing that the proposed trademark should not be registered due to potential conflicts or other legal grounds.
• Power of Attorney: A legal document that authorizes an attorney or agent to act on behalf of an applicant in trademark registration proceedings, including communication with the INPI and handling legal challenges.
• Priority claim: A right established under the Paris Convention and other international treaties, allowing an applicant who has filed for a trademark in one country to claim that filing date when applying in another country, thus securing an earlier priority date.
• Registration certificate: The official document issued by the trademark office (INPI) confirming that a trademark has been registered. This certificate grants the owner exclusive rights to use the mark for the goods or services listed in the registration.
• Renewal: The process of extending the legal protection of a trademark beyond its initial registration period (typically 10 years in Brazil) by paying the required fees before the registration expires.
• Substantive Examination: The stage in the trademark registration process where the INPI reviews the application in detail to ensure that the trademark meets all legal requirements for registration, such as distinctiveness and absence of conflicts with existing marks.
• Trademark dilution: The weakening or loss of a trademark's distinctiveness and reputation, often due to unauthorized use or association with inferior products, even in cases where there is no direct consumer confusion.
• Trademark dispute: A legal conflict arising when two or more parties claim rights over the same or a similar trademark, often involving allegations of infringement, misclassification, or brand dilution.