BRAZIL Law and Practice Contributed by: Fabiano de Bem da Rocha, Gustavo Bahuschewskyj Correa, Kamille Trindade Machado and Milton Lucídio Leão Barcellos, Leão Intellectual Property
marks are protected irrespective of local registration under the Paris Convention. 2.2 Requirements for Trade Mark Protection To be registrable, a trade mark must be distinctive, lawful and available, meaning it must not be descrip- tive or generic, must not violate public order or moral- ity, and must not conflict with prior third-party rights. Use in commerce is not a prerequisite for filing or reg- istration, although it becomes relevant for maintaining the registration. Acquired distinctiveness, or secondary meaning, may be demonstrated through evidence such as duration of use, advertising efforts, market recognition and consumer perception, although the Brazilian Pat- ent and Trademark Office tend to apply this doctrine restrictively. Well-known marks are protected regardless of reg- istration, while marks recognised as highly reputed ( marca de alto renome ) enjoy broader protection across all classes once such status is granted by INPI. 2.3 Trade Mark Registration System Trade mark registration is required to obtain full enforceable rights in Brazil. The procedure involves filing an application with INPI, followed by a formal examination, publication for opposition, a 60-day opposition period, substantive examination and a final decision. The average timeframe for obtaining registration ranges from 12 to 24 months, depending on whether oppositions or office actions arise. Official fees are relatively moderate, varying according to the applicant’s status, while professional fees depend on the complexity of the matter. Brazil does not allow multi-class applications, so separate applications must be filed for each class of goods or services. 2.4 Term, Use and Maintenance Trade mark registrations in Brazil are granted for a term of ten years counted from the date of grant and may be renewed indefinitely for successive ten-year periods.
Renewal must be requested within the last year of the registration term, although a six-month grace period is available upon payment of additional fees. The use of the mark is mandatory, and failure to use the mark for a continuous period of five years after registration may subject it to cancellation for non-use. Genuine use generally requires actual commercial exploitation of the mark in Brazil in connection with the registered goods or services, and minor variations that do not alter the distinctive character of the mark are typically accepted. 2.5 Trade Mark Rights and Limitations Registration grants the owner the exclusive right to use the mark throughout the Brazilian territory in con- nection with the registered goods or services, as well as the right to prevent third parties from using identical or confusingly similar signs. However, such rights are subject to certain limitations and defences, including fair descriptive use, use of one’s own name in good faith and the principle of exhaustion of rights, under which the trade mark own- er cannot oppose the circulation of products lawfully placed on the market. 2.6 Trade Mark Enforcement and Remedies Trade mark infringement in Brazil occurs when a third party uses an identical or similar sign in a manner likely to cause confusion or association among con- sumers. Although Brazilian law does not expressly regulate dilution in the same terms as some other jurisdictions, protection against dilution is indirectly recognised, particularly in cases involving highly reputed marks. Passing off is also addressed through unfair competition provisions. Trade mark disputes are typically heard by state courts, while federal courts have jurisdiction when INPI is a party to the case. Civil remedies include injunctions, damages, search and seizure measures and the destruction of infringing goods. Criminal rem- edies are also available for certain types of trade mark violations, including counterfeiting. Border enforce- ment measures may be adopted with the assistance of customs authorities to prevent the importation of counterfeit goods.
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