Further to making the deposit, it is advisable to perform a previous search in the activity desired, to check the existence of a previously deposited trademark

The application for registration of a trademark is submitted in a proper form, which provides information and data on the trademark and the applicant.

The proof of payment of the deposit fee and the labels of the product, if any, shall also be appended to the application

After the presentation, the application is submitted to a formal preliminary examination, and if correctly accompanied by the required documentation, it will be docketed and published in the Industrial Property Magazine, for presentation of contesting by third parties within sixty (60) days.

After having elapsed this term for opposition, the trademark examination will be performed, during which may be made other exigencies, to be satisfied within sixty (60) days.

Lacking an answer to the exigency, the application will be definitely cancelled. Existing an answer, even if not satisfying the exigency, the examination shall proceed.

After the examination, a decision is issued, granting or refusing the request for registration.

An appeal can be made within sixty (60) days.

No appeal can be made, and proof shall be presented, within sixty (60) days, of the payment of the fee related to the issuance of the certificate and the first ten years of effectiveness of the registration.

After this term, and the fee having not been paid, it can still be paid within thirty (30) days. lest the application be definitely cancelled. The fee being paid, the granting of the registration shall be published within one hundred and eighty (180) days.

The law also foresees the action of nullity, which can be filed within a term of five (5) years of the date of granting of the registration.

The above mentioned terms are as of the date of publication in the RPI - Revista da Propriedade Industrial.

A trademark, according to the Brazilian law, is every visually perceptible distinctive signal, identifying and distinguishing products and services, and giving the right of exclusive use throughout the domestic territory in its activity, avoiding confusion to the consumer.

By means of an expert report, the economic value of your trademark will be appraised, providing, among others, the following benefits: increase of the fixed assets and of the net equity, reduction of the degree of indebtedness, etc.

Brazilian Trademark: Trademark regularly deposited in Brazil by a person domiciled in the country.

Foreign Trademark: Trademark deposited in Brazil by someone domiciled abroad.
"Art. 217 – The person domiciled abroad shall constitute and maintain a duly qualified attorney domiciled in the country, with powers to represent it administratively and judicially, including being served of process ".

The trademarks, regarding their use, can be of products, services, collective or of certification.

Trademarks of Products or Services: Trademarks used to distinguish products and services from other identical, or similar products of different origin.

Collective Trademarks: Trademarks used to identify products from members of a certain entity

Trademarks of Certification: Trademarks destined to certify the compliance of a product or service with certain standards or technical specifications, particularly regarding the quality, nature, material used and methodology employed.

Nominative Trademark: Verbal or nominative trademarks are composed by one or more words of the Roman alphabet, comprising also neologisms, and the combinations of letters and Roman numbers.

D I N Â M I C A

Figurative Trademark: Also known as emblematic trademark, composed by drawing, image, figure, symbol or any fantasy form of letters and numbers, isolated, as well as ideograms of languages such as Japanese, Chinese, Hebrew, etc. In this case the legal protection falls upon the ideogram itself and not upon the word it represents, save if the Applicant states in his application the word represented by the ideogram, provided that it is understandable by a significant portion of the consumer public, case in which it will be considered as a mixed trademark.

Mixed Trademark: Also called Composite trademark, the Mixed trademark comprises the combination of nominative and figurative elements or of nominative elements of stylish writing.

Tridimensional Trademark: Those constituted by the plastic form (understood as the configuration or physical conformation) of a product or wrapping having a distinctive capacity by itself and be dissociated from any technical effect.

Territoriality (and exception)

Article 129 of the LPI consecrates the principle of territorial protection by stating: "the ownership of the trademark is acquired by the validly issued registration, pursuant to this law, warranted the exclusive use within the domestic territory to its holder ".
The protection offered by the State does not exceed the territorial limits of the country, and only within this limit is recognized the right of ownership and exclusiveness of the trade trademark.
There is however one exception to this principle, which is the protection given to a trademark notoriously known pursuant to art. 6 bis of the Paris Union Covenant (CUP), which says:

"The countries of the Union undertake to refuse or invalidate, administratively if allowed by the laws of the country, or by request of the concerned party, and to forbid the use of a factory or commerce trademark constituting reproduction, imitation or translation capable of creating confusion, of a trademark considered by the authorities of the country as notoriously belonging to a person protected by the Covenant and used for identical or similar products. The same thing applies when the essential part of the trademark is a reproduction of a notoriously known trademark or an imitation capable of creating confusion”.

By this rule Brazil undertakes, as a member of the Covenant, to refuse or invalidate the registration of a signal constituting usurpation of a trademark regularly protected by deposit or registration in another country also member of the Covenant, when this is notoriously known in Brazil, independently of being previously deposited or registered in Brazil.

Since the Paris Covenant does not define notoriety, nor establishes any criteria for the appreciation thereof, the INPI. as the competent authority to appreciate this subject, considers the matter observing if the trademark is renowned or famous in Brazil in its field of activity.

Speciality (and exception)

The protection granted to the trademark falls upon the products, goods or services corresponding to the activities of the applicant, seeking to distinguish them from similar or identical other ones of different origin.

The Brazilian law also foresees the Highly Renowned Trademark for the cases in which the duly registered signal is so renowned as to exceed the market segment to which it was originally attributed.

Attributive (and exception)

The system of registration of a trademark is legally attributive, i. e. its ownership and exclusive use are only acquired through the registration.

As a general rule, he who first deposits an application gains priority for registration. Nevertheless this rule has an exception, the right of the previous user. According to this, the person who in good faith used in this country for at least six (6) months an identical or similar trademark for the same purpose, may claim preemptive right to registration.

The Brazilian juridical system of repression of unfair competition rests upon special law and devices derived from international treaties and domestic legislation.

No internal law defines unfair competition. The commonly accepted definition is that of art. 10 bis (2) of CUP, which reads:

2- Constitutes act of unfair competition any act of competition contrary to honest uses in industrial or commercial matters.

In this norm of the Union there is a non-exhaustive list of acts to be repressed for constituting unfair competition. Among them we select the following:

a) – any fact capable to somehow create a confusion or undue association with the establishment, products or industrial or commercial activity of a competitor;
b) – indications or allegations capable of, if being used in the commerce, to lead the public to error on the nature, manner of manufacture, characteristics, use or quality of the goods.

In this same sense, LPI, in its article 2º, item V, represses the practice of unfair competition as a means to protect rights related to industrial property, having in view the social interest and the technologic and economic development of the country.

Are applied, for the calculation and granting of rights related to industrial property:

a) – The Federal Constitution;
b) – The tratys and covenants of which Brazil is a member, now or in the future;
c) - Law no. 9.279, of May 14, 1996;
d) – Every norm having to do with Industrial Property Rights in its ample sense, even if part of other legal instruments, such as civil and commercial laws and the Copyrights.

The registration shall immediately lapse, by request of any person with a legitimate interest, after five years of its granting, if:

• The use of the trademark has not been initiated in Brazil;
• The use of the trademark has been disrupted for more than five consecutive years;
• The trademark has been used with a modification resulting in change of its original distinctive character as described in the registration certificate.

The owner must effectively use the trademark, i.e., not sporadically or symbolically.

The forfeiture of rights of use of the trademark results from:

• The expiry of its effectiveness term;
• Waiver;
• Lapsing;
• Non-compliance with the provisions of art. 217 of LPI (power of attorney).

The effectiveness of the registration of the trademark is of ten (10) years as of the date of the granting. This term is renewable by request of the holder for equal successive periods. Otherwise it shall be extinguished and the trademark will be available for third parties