Brazil: ICLG Trademarks 2017

1 RELEVANT AUTHORITIES AND LEGISLATION

1.1 What is the relevant trade mark authority in your jurisdiction?

The relevant authority is the Brazilian Patent and Trademark Office ("BPTO"), also referred to as the National Institute for Industrial Property (Instituto Nacional da Propriedade Industrial – "INPI", in Portuguese).

1.2 What is the relevant trade mark legislation in your jurisdiction?

The relevant legislation is as follows:

• Decree No. 1,263 of October 10, 1994 – ratifying the Paris Convention for the Protection of Industrial Property as last revised at Stockholm;
• Decree No. 1,355 of December 30, 1994 – ratifying the TRIPS Agreement; and
• Law No. 9,279 of May 14, 1996 – the Brazilian Industrial Property Act.

2 APPLICATION FOR A TRADEMARK

2.1 What can be registered as a trademark?

All visually perceptible distinctive signs, when not prohibited by law, are eligible for registration as a trademark, pursuant to Section 122 of the Brazilian Intellectual Property Act ("Brazilian IP Act"). As such, word, figurative, composite and 3D forms are registrable; however, "non-traditional" marks, such as musical jingles or colours, are not allowed in Brazil.

In any event, to reach registration a trademark must fulfil the basic requirements of relative novelty, veracity and distinctiveness.

2.2 What cannot be registered as a trademark?

The following are statutorily barred from registration under the Brazilian IP Act:

1. crests, armorial bearings, medals, flags, emblems, distinctions and monuments, as well as their respective names, representations or imitations, when they are of an official or public character, whether they are national, foreign or international;
2. an isolated letter, numeral and date, unless displayed in a sufficiently distinctive form;
3. an expression, representation, drawing or any other sign that is contrary to [accepted principles of] morality and good conduct or is offensive to a person's honour or image, or is an affront to the freedom of conscience, belief, religious cult or ideas and feelings worthy of respect and veneration;
4. the designation or acronym of a public entity or agency, unless registration is applied for by the public entity or agency itself;
5. the reproduction or imitation of the characteristic or distinguishing element of a third party's title of establishment or company name, liable to cause confusion or association with such distinctive signs;
6. generic, necessary, common, usual or simply descriptive signs, when they are related to the products or services they identify, or those commonly used to indicate a characteristic of the products or services regarding their nature, nationality, weight, value, quality and time of production or rendering of a service, unless displayed in a sufficiently distinctive form;
7. signs or expressions used merely as a means of advertising;
8. colours and their names, unless displayed or combined in a unique and distinctive manner;
9. a geographical indication and its imitation liable to cause confusion, or a sign that may falsely lead to a geographical indication;
10. a sign that leads to a false indication as to origin, source, nature, quality or utility of the products or services for which the mark is intended;
11. the reproduction or imitation of an official hallmark regularly used to guarantee a standard of any kind or sort;
12. the reproduction or imitation of a sign that has been registered as a collective or certification mark by a third party, with due regard to the provision of Article 154;
13. the name, award or symbol of an official or officially recognised sporting, artistic, cultural, social, political, economic or technical event, as well as an imitation liable to create confusion, except by authorisation of the competent authority or entity promoting the event;
14. the reproduction or imitation of a title, policy, coin and paper currency of the Union, the States, the Federal District, the Territories, the Municipalities or of any country;
15. the legal name or corresponding signature, family name or patronymic and the image of third parties, except by consent of the owner, his heirs or successors in title;
16. well-known pseudonyms or nicknames and individual or collective artistic names, except by consent of the owners, their heirs or successors in title;
17. literary, artistic or scientific works, as well as titles that are protected by copyright and are liable to cause confusion or association, except by consent of the author or owner;
18. technical terms used in industry, science and art that are related to the products or services they identify;
19. the reproduction or imitation, either wholly or in part, even with additions, of another person's registered trade mark to distinguish or certify identical, similar or related products or services liable to cause confusion or association with the other person's mark;
20. the duality of trade marks in the name of a single owner for the same products or services unless, in the case of marks of the same nature, they are displayed in a sufficiently distinctive form;
21. the necessary, common or usual form of a product or packaging, or a form that cannot be dissociated from a technical effect;
22. an object that is protected by registration as an industrial design in the name of a third party; and
23. a sign that imitates or reproduces, either wholly or in part, a trade mark which the applicant clearly could not be unaware of as a result of his activity, in the name of a person established or domiciled in Brazilian territory or in a country that is bound to Brazil by agreement, or that assures reciprocity of treatment, if the mark is intended to identify identical, similar or related products or services liable to cause confusion or association with the other person's mark.

2.3 What information is needed to register a trade mark?

In addition to the basic filing requirements, such as the trade mark and goods and services claimed, the applicant must provide the following information:

• priority number and date, if applicable;
• declaration confirming that the products or services applied for are related to an activity in which the applicant is effectively and lawfully engaged;
• Power of Attorney; and
• colour claim, if applicable.

Both the priority document and the Power of Attorney may be filed later (four months and 60 days, respectively) as long as a supplemental deadline is requested when the application is filed.

2.4 What is the general procedure for trademark registration?

Once the application is filed, the BPTO will assign a serial number and perform a formality check, which consists of confirming that all the relevant information has been correctly provided by the applicant on the filing form (adequate representation of the trade mark, priority number, attorney of record, declaration of activity and other documents that may have been submitted). If the application meets the minimum filing requirements, it will be published for opposition purposes in three to four weeks from filing.

Interested third parties will then have 60 days to raise objections and file oppositions (no extensions of time are allowed). If an opposition is filed, a notice will be published and the applicant will have an unextendable 60-day term to submit a response.

The examination of the application (including reviews on both absolute and relative grounds) will only be carried out by the BPTO after the deadlines relating to opposition proceedings expire. Roughly three years from the filing of the application, the BPTO will publish its decision on the registrability of the trade mark, either allowing or rejecting registration. If an application is allowed, the applicant will have a 60-day term to pay the final issuance fees, whereas, if rejected, the same deadline will be triggered for the filing of an appeal.

When granted after payment of the issuance fees, the registration will be published in the Official Bulletin and the corresponding Certificate will be provided electronically by the BPTO within approximately two months. It is not necessary to inform intent-to-use at any time.

2.5 How can a trade mark be adequately graphically represented?

There are no rules for representing word trade marks, which must simply be typed in the application filing form. For adequate graphical representation of composite and device trademarks, the applicant is required to inform the applicable classes from the International Classification of Figurative Elements of a Mark.

Regarding 3D trademarks, the applicant is required to present an attachment with the posterior, anterior, top, bottom, sides and perspective views. For applications claiming the protection of colour schemes, an internationally recognised colour code is not required and the applicant must simply present prints (samples) of the trade mark in colour.

2.6 How are goods and services described?

Goods and services can be described according to the general description of the Nice Classification, or with a more specific description, depending on the applicant's interest. Given that intent-to-use is not required, it is permissible to claim whole class headings. However, the goods and services claimed must be related to the activity in which the applicant is effectively and lawfully engaged.

2.7 What territories (including dependents, colonies, etc.) are or can be covered by a trade mark in your jurisdiction?

Rights over a trademark are acquired by means of a registration and will have effect only within the Brazilian territory.

2.8 Who can own a trade mark in your jurisdiction?

In Brazil, a trade mark may be owned by natural persons and legal (juristic) persons under public or private law, such as corporations, partnerships, joint ventures, unions, associations, and any other entity capable of being represented in a court of law.

For collective or certification marks, the application can only be filed by a legal person who, respectively, represents the collectivity or has no direct commercial or industrial interest in the certified products.

2.9 Can a trade mark acquire distinctive character through use?

The BPTO is unwilling to allow registration of trademarks that are not inherently distinctive based on the understanding that, having adopted the attributive system for the acquisition of rights, the circumstances and facts predating the filing of the application are not, in principle, taken into account.

In other words, it is the BPTO's view that its role is limited to analysing (i) the intrinsic distinctiveness of a trade mark, and (ii) its distinctiveness by comparison to other registered trademarks.

Despite the above, secondary meaning is widely accepted by Brazilian courts, which have not only built considerable case law confirming the possibility of distinctive character of a trade mark being acquired through use, but have also expressly recognised the applicability of Section 6 quinquies of the Paris Convention.

In any event, involvement of the Brazilian courts is only permissible after a decision is handed down by the BPTO, and therefore, once the trademark application is rejected for lack of distinctive character, a court action must be filed seeking the annulment and subsequent revision of the administrative decision. In order to evidence before the Brazilian courts that a trademark has acquired secondary meaning, the main elements, which should be provided, are as follows:

• time of continuous use in Brazil;
• acknowledgment by the competition;
• notoriety (recognition by Brazilian consumers);
• period of time where exclusive use was enjoyed; or
• non-contestability by third parties.

Additional factors put forward by Brazilian scholars include the applicant's intent of distinctive use, which consists in repeated efforts to make the trademark distinctive, removing the same from the public domain.

2.10 How long on average does registration take?

If there are no objections raised, the registration process on average takes about three to four years after filing.

2.11 What is the average cost of obtaining a trademark in your jurisdiction?

An average overall figure, not including representative fees, is USD 295.00, which consists of the following:

• filing of the trade mark application in one class (in electronic form, with free specification of goods/services): roughly USD 105.00; and
• payment of issuance fees and the first 10-year term of the registration, including the Certificate of Registration: roughly USD 190.00.

When considering representative fees, a reasonable budget for an application in one class is between USD 500.00 and USD 900.00.

2.12 Is there more than one route to obtaining a registration in your jurisdiction?

No; a trademark registration can only be granted by the BPTO and, for now, no alternative routes have been implemented in Brazil (such as the Madrid Protocol, which is still under discussion).

2.13 Is a Power of Attorney needed?

Yes, a Power of Attorney is one of the minimum requirements and must be filed together with the trademark application or, upon payment of additional fees, within 60 days after filing.

In the case of foreign applicants, the Power of Attorney is required to empower representation both administratively and judicially, and to receive service of summons.

2.14 If so, does a Power of Attorney require notarization and/or legalisation?

Neither consular legalisation nor notarisation is required.

2.15 How is priority claimed?

The claim to priority must be made at the time the application is filed and may be supplemented within 60 days by other priorities that precede the filing date in Brazil.

The claim to priority shall be evidenced by means of a suitable document of origin, indicating the number, the date, and the reproduction of the application or registration, and must be accompanied by an uncertified translation. When not filed together with the application, the document evidencing priority must be submitted within four months counted from the filing date, under penalty of loss of the priority.

In the event that priority has been obtained through assignment, the corresponding document must be submitted together with the priority document.

2.16 Does your jurisdiction recognise Collective or Certification marks?

Yes, both collective and certification marks are recognised and registrable in Brazil.

In the case of collective marks, the application can only be filed by a legal person who represents the relevant trade association, which may engage in a different activity from that of its members, and must contain the regulations governing use of the mark.

In the case of certification marks, the application can only be filed by a person that has no direct commercial or industrial interest in the certified products or services, and must contain (i) the characteristics of the products or services to be certified, and (ii) the control measures that the owner shall adopt.

3 ABSOLUTE GROUNDS FOR REFUSAL

3.1 What are the absolute grounds for refusal of registration?

The following are, in and of themselves, considered absolute grounds for refusal (related to the intrinsic qualities of the mark) and are statutorily barred from registration under the Brazilian IP Act:

• crests, armorial bearings, medals, flags, emblems, distinctions and monuments, as well as their respective names, representations or imitations, when they are of an official or public character, whether they are national, foreign or international;
• an isolated letter, numeral or date;
• an expression, representation, drawing or any other sign that is contrary to [accepted principles of] morality and good conduct or is offensive to a person's honour or image, or is an affront to freedom of conscience, belief, religious cult or ideas and feelings worthy of respect and veneration;
• the designation or acronym of a public entity or agency, unless registration is applied for by the public entity or agency itself;
• generic, necessary, common, usual or simply descriptive signs, when they are related to the products or services they identify, or those commonly used to indicate a characteristic of the products or services regarding their nature, nationality, weight, value, quality and time of production or rendering of a service;
• signs or expressions used merely as a means of advertising;
• colours and their names;
• a sign that leads to a false indication as to origin, source, nature, quality or utility of the products or services for which the mark is intended;
• the reproduction or imitation of an official hallmark regularly used to guarantee a standard of any kind or sort;
• the reproduction or imitation of a title, policy, coin and paper currency of the Union, the States, the Federal District, the Territories, the Municipalities or of any country;
• technical terms used in industry, science and art that are related to the products or services they identify; and
• the necessary, common or usual form of a product or packaging, including a form that cannot be dissociated from a technical effect.

3.2 What are the ways to overcome an absolute grounds objection?

The applicant may only overcome absolute grounds refusals based on descriptiveness, deceptively misdescriptive meanings, slogans or lack of distinctiveness, in which case it will be required to argue, with appropriate supporting evidence, that the trade mark is inherently eligible for registration. As explained in question 2.9, the BPTO is unwilling to accept arguments of acquired distinctiveness through use, though secondary meaning is recognised by Brazilian courts.

If refusal is grounded on prohibitions relating to the protection of morality or public order, it is not possible to overcome the objection unless the applicant evidences that the absolute grounds were not applicable to that specific case.

3.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?

Any decision can be appealed in its entirety to the Trademark Board of Appeals of the BPTO. Partial appeals are also accepted in a scenario where the trade mark application was allowed with a disclaimer of non-exclusive rights.

In this case, the applicant is required to pay the final issuance fees and concomitantly appeal against the disclaimer.

3.4 What is the route of appeal?

Once the notice of refusal of registration is published, the applicant will have an unextendable 60-day deadline to file an appeal with the Trademark Board of Appeals of the BPTO. The appeal will have the full effect of suspending the decision until the President of the BPTO ultimately decides to follow or disregard the opinion provided by the Trademark Board of Appeals.

The President's decision is unappealable and will terminate the administrative phase.

Notwithstanding, any decision by the BPTO is susceptible to revision by a Brazilian Federal District Court, and therefore not only is the decision to maintain the rejection of an application (rendered by the President of the BPTO) reversible through judicial proceedings, but also the first instance refusal. This means applicants may decide whether to appeal a notice of refusal or take the discussion directly to court.

4 RELATIVE GROUNDS FOR REFUSAL

4.1 What are the relative grounds for refusal of registration?

The following are considered relative grounds for refusal (related to conflicts with earlier trade mark rights belonging to third parties) and are statutorily barred from registration under the Brazilian IP Act:

• the reproduction or imitation, either wholly or in part, even with additions, of another person's registered trade mark to distinguish or certify identical, similar or related products or services, liable to cause confusion or association with the other person's mark;
• the reproduction or imitation of the characteristic or distinguishing element of a third party's title of establishment or company name, liable to cause confusion or association with such distinctive sign;
• a geographical indication and its imitation liable to cause confusion, or a sign that may falsely lead to a geographical indication; the reproduction or imitation of a sign that has been registered as a collective or certification mark by a third party;
• the name, award or symbol of an official or officially recognised sporting, artistic, cultural, social, political, economic or technical event, as well as an imitation liable to create confusion, except by authorisation of the competent authority or entity promoting the event;
• the legal name or corresponding signature, family name or patronymic and the image of third parties, except by consent of the owner, his/her heirs or successors in title;
• well-known pseudonyms or nicknames and individual or collective artistic names, except by consent of the owners, their heirs or successors in title; literary, artistic or scientific works, as well as titles that are protected by copyright and are liable to cause confusion or association, except by consent of the author or owner; an object that is protected by registration as an industrial design in the name of a third party; and
• a sign that imitates or reproduces, either wholly or in part, a trade mark which the applicant clearly could not be unaware of as a result of his activity, in the name of a person established or domiciled in Brazilian territory or in a country that is bound to Brazil by agreement, or that assures reciprocity of treatment, if the mark is intended to identify identical, similar or related products or services liable to cause confusion or association with the other person's mark.

4.2 Are there ways to overcome a relative grounds objection?

To overcome objections based on conflicts with earlier trademark rights belonging to third parties, the applicant may submit arguments, with appropriate supporting evidence, that confusion is not likely; the applicant may also limit the specification of goods or services. However, it is not possible to apply for a limitation on the trade mark at this stage. The BPTO only accepts modifications to the trademark (removal of non-registrable element) (i) provided the main characteristics of the application are not changed, and (ii) if requested by the applicant prior to examination.

Coexistence agreements and letters of consent are not binding on the BPTO and are merely received as evidence supporting the possibility of coexistence. Based on this interpretation, it is not uncommon for agreements of this nature to be disregarded in the administrative sphere, whereas they are widely accepted by Brazilian courts.

It is also possible to overcome relative grounds objections by invalidating the earlier registration cited as a ground for refusal, by means of either administrative nullity proceedings or a non-use cancellation action.

4.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?

Please see question 3.3.

4.4 What is the route of appeal?

Please see question 3.4.

5 OPPOSITION

5.1 On what grounds can a trade mark be opposed?

An opposition can be based on absolute and/or relative grounds (see questions 3.1 and 4.1), as well as bad faith.

Further, oppositions invoking special rights may be filed in exception to general rules of the Brazilian IP Act, such as (i) the principle of territoriality, (ii) the principle of specialty, and (iii) the principle of attributive trade mark rights, as explained below:

(i) Oppositions grounded on well-known trademarks

Ownership of a trade mark is acquired by a valid registration, which grants the right to exclusive use throughout the Brazilian territory.

As a rule, a prior trade mark application or registration is required as the basis for an opposition. However, a trademark that is well-known in its field of activity (pursuant to the provisions of Section 126 of the Brazilian IP Act and Section 6 bis of the Paris Convention) will enjoy special protection, irrespective of whether or not it has been previously filed for or registered in Brazil. As such, by submitting evidence of the trade mark being well-known in Brazil (and not only abroad), an opposition can be filed regardless of whether a prior application exists at the BPTO (an exception to the principle of territoriality).

Nonetheless, it is mandatory to file a trademark application within 60 days of the opposition.

(ii) Oppositions grounded on highly renowned (reputed) trademarks

The right to the exclusive use of a trademark is limited to the goods or services covered by the registration. As a rule, a prior trademark application or registration can be used as the basis for an opposition as long as the opposed trademark was applied to identify identical, similar or related goods or services.

However, a trademark that is considered highly renowned will be assured special protection in all fields of activity (pursuant to Section 125 of the Brazilian IP Act). As such, by obtaining 'highly renowned' status (which must have been applied for previously through specific proceedings), an opposition can be filed against similar trade marks in any of the existing classes of products or services (an exception to the principle of specialty).

(iii) Oppositions grounded on prior fair use

The priority in registration is based on the filing date of the trademark application or priority document. As a rule, Brazil adopts the first-to-file system and prior use does not support a priority claim.

However, any person who, in good faith, on the priority date or the filing date of the application, was using an identical or similar mark to distinguish or certify identical, similar or related products or services for at least six months in Brazil shall enjoy a right of precedence in registration (pursuant to Section 129, 1st Paragraph, of the Brazilian IP Act). As such, an opposition against a more senior application is possible if based on prior use (an exception to the principle of attributive trademark rights).

5.2 Who can oppose the registration of a trademark in your jurisdiction?

Any natural persons or legal (juristic) persons under public or private law that would be damaged by a registration may oppose the trademark application.

5.3 What is the procedure for opposition?

Once an application is published in the Official Bulletin, any interested third parties will have an unextendable 60-day term to file an opposition. A single, supplemental deadline of 60 days may be required for the submission of further documents; however, additional arguments that have not been previously raised in the opposition will be disregarded.

Roughly one to two months from filing, the notice of opposition will be published in the Official Bulletin, triggering the applicant's deadline to submit a response, which is not mandatory and will not result in a default decision.

In any event, the BPTO will conduct the substantive examination of the application and, in addition to the arguments raised in the opposition, will consider any absolute or relative grounds for refusal, including other prior registrations for identical or similar trademarks, in the name of different third parties.

6 REGISTRATION

6.1 What happens when a trademark is granted registration?

Once a trademark is registered, the grant notice will be published in the Official Bulletin. The BPTO will issue a Certificate of Registration in electronic form roughly two months from the payment of the final issuance fees.

As mentioned in question 2.4, the final issuance fees are payable within 60 days of the allowance of the application. Therefore, when the trademark is granted registration, no further fees are payable for the Certificate of Registration to be issued.

6.2 From which date following application do an applicant's trademark rights commence?

Ownership of a trademark is acquired by a valid registration, which grants the right to exclusive use throughout Brazilian territory.

Notwithstanding, a pending trade mark application is an expectant right; as such, the Brazilian IP Act assures the applicant the right to safeguard its material integrity and reputation. The applicant is therefore allowed to: assign the trademark; license its use; and file oppositions; however, it is prevented from filing an infringement claim.

A trademark infringement claim can only be grounded on a valid registration, unless it is based on unfair competition (passing off).

6.3 What is the term of a trademark?

The registration term is 10 years, renewable for equal successive periods.

6.4 How is a trademark renewed?

The renewal application must be filed during the last year of the term of registration and must be accompanied by proof of payment of the respective official fee (roughly USD 270.00).

If the renewal application is not filed prior to the expiration of the term of registration, the applicant may do so within the following six months, upon payment of an additional fee (roughly USD 410.00).

7 REGISTRABLE TRANSACTIONS

7.1 Can an individual register the assignment of a trademark?

Yes. The recordal of a trademark assignment (application or registration) is requested via a specific form, enclosing either a simple assignment document signed by the parties or their legal representatives, or the original assignment document or simple copy thereof and a Power of Attorney executed by the assignee.

Legalisation and notarisation are not mandatory for recordation purposes.

7.2 Are there different types of assignment?

No. By way of example, it is not possible to request the partial assignment of a trademark application or registration (e.g. for certain goods or services only). According to the Brazilian IP Act, the assignment must include all registrations or applications that cover identical or similar trademarks covering identical, similar or related products or services, under the penalty of having the non-assigned registrations cancelled or the applications dismissed (Section 135 of the Brazilian IP Act). Recently, the BPTO started raising official actions during the assignment proceeding, requesting the parties to amend the assignment document to avoid the cancellation or dismissal of the marks that were not assigned and would fall within this legal provision.

7.3 Can an individual register the licensing of a trademark?

Trademark licence agreements are recorded before the BPTO's Contracts Division and therefore follow a different proceeding from trademark assignment recordals, which are processed before the TradeMark Division. For licence agreements, it is necessary to present a specific form enclosing either the original or a certified copy of the licence agreement, duly notarised and legalised before a Brazilian Consulate.

7.4 Are there different types of licence?

Yes. Both non-exclusive and exclusive licences are eligible for recordal, as well as sublicences. Royalties, though, may only be paid from the licence of a trademark registration.

7.5 Can a trade mark licensee sue for infringement?

A licensee may sue for infringement only if the licence agreement foresees its legitimacy for defending the mark before the courts and upon the recordal of the licence agreement before the BPTO.

7.6 Are quality control clauses necessary in a licence?

Quality control clauses are not mandatory in trademark licence agreements and the absence thereof is not legally foreseen as a cause for the revocation of the registration.

7.7 Can an individual register a security interest under a trademark?

A security interest may be created on a trade mark security agreement to warrant the fulfilment of obligations maintained between the owner of the mark and the lender. In order to be effective, the BPTO must record the lien or limitation.

7.8 Are there different types of security interest?

Yes, and all types of security interest are eligible for recordal before the BPTO.

8 REVOCATION

8.1 What are the grounds for revocation of a trademark?

The grounds for revocation, provided for by Section 142 of the Brazilian IP Act, are the following: (i) upon expiration of the registration term (failure to renew the registration for an additional 10-year period); (ii) express renouncement of the rights over the trade mark (either wholly or for part of the products or services); (iii) cancellation on non-use grounds; or (iv) failure to comply with Section 217 of the Brazilian IP Act, according to which a person domiciled abroad must appoint and maintain an attorney domiciled in Brazil, duly empowered to represent the party and receive service of summons. Only item (iii) requires a specific proceeding to have the mark revoked.

The revocation (or forfeiture) is determined if the use of the mark has not been initiated in Brazil or if the use has been interrupted for more than five consecutive years; or if, during the same period, the mark has been used with modifications which constitute an alteration of its original distinctive character protected by the Certificate of Registration.

The mark may be declared partially revoked if the registrant fails to evidence the use of the mark in connection with certain products or services that are either similar or related to those in respect of which use of the mark was proved.

8.2 What is the procedure for revocation of a trademark?

The procedure for the renouncement of rights is very simple. The presentation of a simple form requesting the homologation of the renouncement is enough. It should be noted, though, that the legal representative must have specific powers to renounce the rights over a trademark registration.

As for revocation based on non-use grounds, the Brazilian IP Act provides a specific proceeding. The proceeding is initiated by the filing of a specific form in which the applicant attests its legitimacy for requesting the forfeiture declaration. The legitimacy of the applicant may lie on a trade mark application, copyright or any other arguable right against the targeted registration.

8.3 Who can commence revocation proceedings?

Revocation proceedings may be commenced by any interested third party as from the fifth year of the registration (counted as from the publication of the issuance decision). A non-use cancellation action will be dismissed in the case that use of the mark has been evidenced or non-use justified in a previous proceeding filed less than five years after the request.

8.4 What grounds of defence can be raised to a revocation action?

In a non-use cancellation action, the registrant must either evidence the effective use of the mark for the past five years or justify the non-use of the mark on legitimate grounds (e.g. bankruptcy; or failure to initiate its activities in Brazil, despite evidencing serious efforts to do so). From experience, invoices and/or certificates of importation attesting that the products have actually entered the country have more weight in the overall analysis of the effective use of the mark, though by law all available evidence should be taken into consideration by the examiner (e.g. advertisements; pictures; videos; and printed materials in general, among others – as long as they are duly dated, the mark may be clearly perceived and the products and services are described).

8.5 What is the route of appeal from a decision of revocation?

Appeals are available for the defendant, in case the registration is revoked, and for the applicant, in case of maintenance of the registration, within 60 days as from the publication of the decision. The President of the BPTO will give the last word on the appeal. In practical terms, the appeal is analysed by a second instance examiner who may either accept or reject the appeal, and then this decision is submitted to the President of the BPTO for homologation. The decision on the appeal is final and ends the administrative phase.

If, thereafter, either party decides to challenge the decision, it will be necessary to initiate a specific lawsuit before a Federal Court contesting the BPTO's decision (Section 146 of the Brazilian IP Act).

9 INVALIDITY

9.1 What are the grounds for invalidity of a trademark?

The invalidity proceeding may be initiated by any interested party – even the BPTO ex officio based on the violation of any provisions of the Brazilian IP Act. Most invalidation proceedings, though, are based on the violation of one or more items of Section 124 of the Brazilian IP Act (both absolute and relative grounds for the invalidity of a registration) or Section 126 of the Brazilian IP Act (which protects well-known marks (Article 6 bis of the Paris Convention)).

9.2 What is the procedure for invalidation of a trademark?

The invalidation of a trademark registration may be initiated by any interested party within 180 days, counted as from the publication of the issuance decision before the BPTO or within five years by the filing of a specific lawsuit before a Federal Court. A notice informing the registrant that the invalidity proceeding has been initiated is published, opening a 60-day term for a response. After that, a decision is rendered by the second instance examiner and homologated by the President of the BPTO. No appeals are possible from such a decision, which closes the administrative phase and may only be contested before the courts.

9.3 Who can commence invalidation proceedings?

Invalidation proceedings may be commenced by any interested third party or the BPTO ex officio.

9.4 What grounds of defence can be raised to an invalidation action?

A wide variety of defence arguments may be raised, such as: prior existing rights (e.g. trade mark registrations for similar products or services); prior coexistence of similar marks in the same segment; or well-known status, among others.

9.5 What is the route of appeal from a decision of invalidity?

The decision is final before the administrative phase and may only be contested by the filing of a specific lawsuit before a Federal Court.

10 TRADE MARK ENFORCEMENT

10.1 How and before what tribunals can a trademark be enforced against an infringer?

An infringement lawsuit may be filed before a State Court (state jurisdiction) where the infringement has taken place or where the defendant has domicile. In exceptional cases, the infringement lawsuit may be filed before a Federal Court when the defendant is a federal body or federal company, for instance. Most cases, though, fall on the general rule and are brought before a State Court.

10.2 What are the pre-trial procedural stages and how long does it generally take for proceedings to reach trial from commencement?

Upon the filing of the lawsuit, the court will analyse whether the initial brief meets the formalities required by the Brazilian Code of Civil Procedure (and, if that is the case, analyse and decide on a preliminary injunction request, if any). After that, and if all the requirements were duly complied with, the court will determine that the defendant be served with a summons. The defendant has 15 days to file a reply to the lawsuit under penalty of the facts raised by the plaintiff being considered as true. If a response is filed, the plaintiff is allowed to file a rebuttal within 10 days. After such period, the court will determine which evidences are allowed to be produced (including the need of an expert opinion), beginning the evidence phase. Once the evidence phase is completed, the case is ready to be tried. The term for such proceedings may vary greatly, depending on the complexity of the case and on the speed of the court. A decision on the merits in an ordinary trade mark infringement case may be expected within six months to two years on average.

10.3 Are (i) preliminary and (ii) final injunctions available and if so on what basis in each case?

Both preliminary and final injunctions are available and may be requested and granted to halt infringement before, or concomitantly with, a decision on the merits. In the case that a preliminary injunction is requested, the plaintiff is required to demonstrate a) urgency, and b) clear-cut evidence of infringement. Another requirement is the analysis of the hardship caused by the decision and the possibility of returning the parties to the status quo ante in the case that the injunction proves unfair or unnecessary. In turn, final injunctions are generally granted when the court confirms the decision on the merits.

10.4 Can a party be compelled to provide disclosure of relevant documents or materials to its adversary and if so how?

Yes, upon the court's assessment and concurrence with the need for the specific evidence. Depending on the nature of the documents, the court may determine that the proceeding be held in secrecy, thus protecting the confidentiality of the information provided.

10.5 Are submissions or evidence presented in writing or orally and is there any potential for cross-examination of witnesses?

In trademark infringement cases, the court usually relies on documentary evidence only, although oral evidence may also be requested by the parties, such as depositions of the representatives of the parties and testimony of witnesses. Oral evidence is usually produced in hearings (whenever necessary, the hearing may occur in a different venue from the one in which the case is being processed and recorded). Cross-examination of witnesses may also be determined at the court's discretion.

10.6 Can infringement proceedings be stayed pending resolution of validity in another court or the Intellectual Property Office?

Yes, an infringement proceeding may be stayed by an annulment action or proceeding involving the same mark until a resolution on its validity is rendered, at the court's discretion.

10.7 After what period is a claim for trade mark infringement time-barred?

A trademark infringement claim may be raised during the validity of the mark. Nonetheless, there is a five-year statute of limitations on filing a lawsuit, counted as from the date the plaintiff became aware of the infringement, and there is also a five-year statute of limitations on requesting past damages.

10.8 Are there criminal liabilities for trademark infringement?

According to Brazilian law, a crime against a trade mark registration is committed by whoever: (i) reproduces a registered mark without consent, or imitates it in a manner that can lead to confusion; or (ii) alters another person's registered mark which is already in use on a product placed on the market. A crime against a trade mark registration is also committed by whoever imports, exports, sells, offers or displays for sale, conceals or keeps in stock: (i) products identified by another person's trade mark, unlawfully reproduced or imitated either wholly or in part; or (ii) a product of his own industry or trade, held in a vessel, container or packaging, bearing another person's legitimate trademark.

All IP-related crimes are generally considered petty crimes and, though they are punishable with detention and/or a fine, the detention is usually converted into a fine.

It should be noted that the detention penalties may be increased by one third to one half if: (a) the offender is or was a representative, attorney or record, agent, partner or employee of the owner of the registration or a licensee; or (b) the mark that has been altered, reproduced or imitated is highly renowned or well known, or is a certification or collective mark.

10.9 If so, who can pursue a criminal prosecution?

Prosecution should be commenced by the filing of a complaint by the owner of the mark or licensee (in that case, provided the licensee is a legitimate party), except for the infringement of national, foreign or international armorial bearings, crests or distinctions, when they are of an official character, in which case the criminal action will be public.

10.10 What, if any, are the provisions for unauthorized threats of trademark

infringement?

There are no provisions which punish threats of trade mark infringement.

11 DEFENCES TO INFRINGEMENT

11.1 What grounds of defence can be raised by way of non-infringement to a claim of trademark infringement?

The defendant may argue a wide variety of defences, such as: the sign does not meet the trademark function; the parties are noncompetitors; there are prior existing similar or identical marks being used in the same market segment; the mark lacks intrinsic distinctiveness and therefore should endure coexistence; continued use or prior use of the mark in good faith and without opposition from the title holder; and prior existing rights over the same sign, among others. Most importantly, and whenever applicable, the defendant must evidence that there is no risk of confusion and/or undue association between the marks.

Besides the above possible defences, according to the Brazilian IP Act the trade mark owner may not: (i) prevent merchants or distributors from using their own distinctive signs together with the mark that identifies the product, in its promotion and commercialisation; (ii) prevent manufacturers of accessories from using the trademark to indicate the destination of the products, provided that fair competition practices are followed; (iii) prevent free circulation of a product placed on the domestic market by the owner or by another party with the owner's consent; or (iv) prevent reference to the trademark in a speech, scientific or literary work or any other publication, provided that this is done with no commercial deception and without detriment to the distinctive character of the trade mark. In all these cases, the use of the mark is legitimate and justifiable.

11.2 What grounds of defence can be raised in addition to non-infringement?

Procedural flaws may be raised in addition to non-infringement arguments as well as the arguable nullity of the mark (e.g. where the trademark is evidently descriptive and/or does not meet the trade mark function).

12 RELIEF

12.1 What remedies are available for trademark infringement?

A wide variety of remedies is available for trademark infringement in both civil and criminal spheres. In the civil sphere, the most common ones are: search and seizure of products; damages (both moral and material recovery of damages); ex parte injunctions with the broadest possible scope (e.g. change of trade dress; replacement of labels; and withdrawal of websites, among others); and monetary penalties for the non-compliance of injunctions. In the criminal sphere, it is possible to seek search and seizure orders, destruction of counterfeits, among other measures.

12.2 Are costs recoverable from the losing party and if so what proportion of the actual expense can be recovered?

Usually the plaintiff advances court fees (and expert fees, whenever the court determines an expert opinion). If the plaintiff wins the lawsuit, then it will be entitled to full recovery of the court fees.

If the plaintiff partially wins, it may recover half of the court fees advanced at the beginning of the lawsuit. Attorneys' contractual fees are not recoverable.

13 APPEAL

13.1 What is the right of appeal from a first instance judgment and is it only on a point of law?

The losing party may appeal to the Appellate Court, bringing into light all factual and law matters discussed in the decision. The decision rendered by the Appellate Court in its turn may also be appealed, but at this stage only regarding matters of law (where an appeal is filed to the Superior Court of Justice), or constitutional questions (where an appeal is filed to the Supreme Court). Other secondary appeals may be filed throughout the prosecution of the case, but with a limited and/or specific scope.

13.2 In what circumstances can new evidence be added at the appeal stage?

As a rule, it is not possible to bring new evidence at the appeal stage. However, the current Code of Civil Procedure provides that new facts may be raised after the decision on the merits if, due to their serious and objective nature, at the time of the fact they were not made available to the party. In the same manner, facts which, due to an existing obstacle, were not accessible to the lawyer or made available to the trial judge at the time they took place, may be submitted as new evidence.

14 BORDER CONTROL MEASURES

14.1 What is the mechanism for seizing or preventing the importation of infringing goods or services and if so how quickly are such measures resolved?

The proceeding may vary slightly depending on the authority involved. In principle, counterfeited products or infringing services may be halted ex officio by the authority that will contact the local representative of the trademark owner, who has 10 days, renewable for an additional 10 days, to provide Customs with a response regarding the infringement. As this scrutiny is conducted randomly by Customs, there is not a 100% assurance that all counterfeits are satisfactorily blocked.

However, interested parties have mechanisms to alert the relevant Authorities of their trade mark rights and provide information regarding the identification of knock-offs. Once infringement is confirmed, the Customs Authority will seize the products/services and may apply the penalty of forfeiture (and destruction). In some cases, Customs require the party to file a specific lawsuit determining the final seizure and destruction. The plaintiff covers the costs entailed by these measures.

15 OTHER RELATED RIGHTS

15.1 To what extent are unregistered trademark rights enforceable in your jurisdiction?

The most usual grounds for the enforcement of unregistered marks are unfair competition (passing off) rules. Also, according to Section 130 of the Brazilian IP Act, a trade mark applicant is assured the right to safeguard the material integrity or reputation of the mark and, for that purpose, the applicant is entitled to notify the infringer or even initiate a lawsuit for preventive purposes. It should be noted, though, that Brazil has adopted the attributive system; that is to say, trademark rights are fully enforceable only upon registration. Therefore, a lawsuit can only be brought by the applicant or user in very limited cases, and in most of them based on associated rights such as company name, prior use, copyrights and so on (e.g. a lawsuit could be brought seeking damages due to unethical or bad-faith behaviour of a distributor, local representative or partner).

15.2 To what extent does a company name offer protection from use by a third party?

In Brazil, company names are protected under the limits of the territory of the state in which it has been registered. In order to afford protection in the whole country, the company name must be registered before the Registrar of Commerce of all states, which is costly and, in most cases, not sufficient to prevent the use or even registration of a similar company name by a competitor. The limited protection afforded to nationals competes with the territorial protection afforded to foreign companies by Article 8 of the Paris Convention, and therefore there is a lot of controversy on the interpretation and harmonisation of the local law and said conventional provision.

15.3 Are there any other rights that confer IP protection, for instance book title and film title rights?

In order to deserve the protection of the Brazilian IP Act and achieve registration as a trademark, the sign must meet the function of a trademark; that is to say, it must be able to distinguish a product or service from another that is identical, similar or related, or of different origin. Therefore, book and film titles may not be protected under the trade mark framework, as they may not meet the function of a trademark. Besides, protection of book titles and film titles fall within the scope of copyrights (Act No. 9.610/98).

It should be noted that the Brazilian IP Act forbids the registration of literary, artistic or scientific works, as well as titles that are protected by the author's rights and are liable to cause confusion or association, except by the consent of the author or right-owner. This prohibition also applies to the translation of book and film titles.

16 DOMAIN NAMES

16.1 Who can own a domain name?

A domain name may be registered by a natural person or legal entity, either Brazilian or foreign. The enrolment of foreign entities as registrants follows a specific proceeding and a proxy holder must be retained in Brazil (residing in Brazil). The company is also requested to execute a document committed to establishing activities in Brazil within 12 months as from the requirement.

16.2 How is a domain name registered?

The proceeding is very simple and is made online via the website of the Brazilian Registrar: http://registro.br. If the domain name is available, the registrant is required to pay the respective fees. Soon after payment, the registration is secured. However, in order to register a domain under the name of a foreign entity, the entity must first be enrolled with The proceeding is very simple and is made online via the website of the Brazilian Registrar: http://registro.br. If the domain name is available, the registrant is required to pay the respective fees. Soon after payment, the registration is secured. However, in order to register a domain under the name of a foreign entity, the entity must first be enrolled with http://registro.br.

In order to enrol a foreign entity as a domain name registrant, it is necessary to present: a specific Power of Attorney; a Declaration of Business Activity, which includes the legal entity's name, address, telephone number, stated business purpose, the name and position of the responsible party, and a summary of the commercial activities; and a Declaration of Obligation, in which the entity agrees to incorporate a Brazilian subsidiary within one year from the date of submission of the application for an identification number, or in which the entity agrees to assign any domain name to a Brazilian company within one year from the execution of the Declaration.

All documents must be notarised and legalised before a Brazilian Consulate and translated by a sworn translator.

16.3 What protection does a domain name afford per se?

The registration affords the right to impede the use and/or enforce the domain name registration against third parties by initiating, for instance, a UDRP ("Uniform Domain Name Dispute Resolution Policy") proceeding (either before the Brazilian Registrar or through one of the accredited arbitration centres such as the World Intellectual Property Organization). The protection afforded to a domain name is similar to the protection afforded to a company's DBA ("Doing Business As") name and are protected by unfair competition rules.

17 CURRENT DEVELOPMENTS

17.1 What have been the significant developments in relation to trademarks in the last year?

On March 31, 2016, the BPTO introduced new rules on trademark disclaimers, which have significantly changed its current practice.

The changes were met with many concerns among the Brazilian IP community, given that they will affect previously acquired rights and risk creating uncertainty as to the scope of protection of a trade mark registration.

In short, the BPTO has abolished the inclusion of specific disclaimers (e.g. "registration granted without exclusive rights over "X" word elements") and established a generic disclaimer to be adopted in all existing cases, including recently allowed applications as well as granted registrations when due for renewal.

The standard disclaimer will read as follows: "the protection arisen from this registration is limited as set forth on Article 124, items II, VI, VIII, XVIII and XXI of Law No. 9.279 of May 14, 1996".

The mentioned provisions of the Brazilian IP Law relate to absolute grounds for refusal, and so, given the comprehensiveness and subject matter of the rules, one can foresee numerous debates over the actual scope of protection of a trademark registration. As a result, many disputes will inevitably have to be resolved in court.

17.2 Please list three important judgments in the trademarks and brands sphere that have issued within the last 18 months.

The Federal Court of Appeals in Rio de Janeiro has decided a nullity action brought by Avon against the BPTO with a view to reversing the rejection of its trademarks "RENEW ULTIMATE", "RENEW CLINICAL" and "RENEW REJUVENATE" for a line of anti-ageing cosmetic products. The BPTO had refused the Brazilian trademark applications based on absolute grounds, but both of the specialised justices on the court's panel overruled said decision after two rounds of judgment sessions.

In addition to the interesting debate regarding the distinctiveness of the trademarks bearing "RENEW" (which was, to a large extent, based on its acquired fame and notoriety – "secondary meaning"), the rules of the new Code of Civil Procedure require that, if an appeal is granted by split decision (2 × 1), said decision must later be ratified in another judgment by two additional voting justices.

Considering that the new Code of Civil Procedure came into force on March 18, 2016, there have only been a handful of cases in the same situation, and even fewer in the courts specialised in IP.

The Federal Court of Appeals in Rio de Janeiro scheduled the second judgment session for December 12, 2016 and, after a long debate, it ratified the decision of the first panel with the vote of the two additional justices, also by split decision, which led to the aggregate result of 3 × 2. The BPTO was finally ordered to grant the respective registrations for the trade marks "RENEW ULTIMATE", "RENEW CLINICAL" and "RENEW REJUVENATE".

On November 23, 2016, the State Court of São Paulo issued an important precedent involving parallel imports on an specific writ seeking an injunction to prevent the sale of the "Xbox One S" video game platform. The products in question were original, but had not yet been officially launched in Brazil by their manufacturer; this was therefore considered unauthorised importation.

It is noteworthy that the debate involving parallel imports in Brazil is highly controversial and that there are very few cases on the subject. Therefore, it is extremely significant that the issue is being widely addressed by the State Court of São Paulo in this case.

In addition to prohibiting the identified "Xbox One S" products from being sold, the court granted an injunction determining the seizure of all products in the possession of the Brazilian importers/traders. The decision was also granted on an urgent basis, given the proximity of "Black Friday", which would have potentiated the infringement and sale of the products in Brazil.

On December 6, 2016, the Superior Court of Justice ruled that there was a conflict between the registered trade mark "PAIXÃO" (which can be translated as "PASSION") for cosmetics, and the domain name www.paixao.com.br, which is a dating website. The Reporting Minister, Hon. Luiz Felipe Salomão, noted that the mere existence of a trade mark registration was not sufficient to guarantee the right of exclusive use in the "virtual world", which was aided by the reduced degree of distinctiveness attributed to the mark "PAIXAO" and the difference in the products/services identified.

Although this can be considered a straightforward case, the decisions rendered by the Superior Court of Justice have significant weight and so close attention must be paid to their interpretation.

There is a high level of scrutiny before special appeals are accepted for analysis by the Superior Courts, and the law forbids the reexamination of factual matters at said level. As a result, aspects involving a potential bad-faith registration were not taken into consideration and, while in this particular case the decision may have rightly been decided based on the difference in activities (the 'speciality principle'), it could have been different if there had been evidence of bad faith.

17.3 Are there any significant developments expected in the next year?

Without any doubt, one of the biggest hurdles is the backlog of work the BPTO is facing. Its new president, Luiz Otávio Pimentel, is little over a year into office and has been negotiating additional funds with the Government so that the Office can overcome the shortage of examiners.

According to the official numbers published by the BPTO, in 2016 there was an increase of 4.8% in trademark applications, adding up to a total of 166,368 new filings, against 158,709 in 2015. The BPTO examiners granted 99,938 trademark registrations in 2016.

At present, BPTO officials are investing in the Office's IT department to improve internal proceedings. However, until further budget is granted to hire additional examiners, we will have to count on Mr. Pimentel's creativity to mitigate the backlog.

17.4 Are there any general practice or enforcement trends that have become apparent in your jurisdiction over the last year or so?

Brazil has adopted a new Code of Civil Procedure, which came into force on March 18, 2016, implementing substantial changes to the country's judicial proceedings. The new rules bring some necessary changes to the legal landscape and are particularly positive to IP practitioners, who can expect more agility in the resolution of judicial disputes and in the qualification and security of the courts' decisions. The enforcement and execution of court decisions were also simplified to improve the collection of damages.

In short, there are special provisions for preliminary injunctions, by which a lack of appeal by the party suffering the injunction will convert the judge's preliminary decision into a final decision on the merits, terminating the whole lawsuit. There are new and improved remedies, such as for the production of supporting evidence (e.g. a technical report on the infringement) in a pre-trial phase, which can be used by right-owners to give further grounds to a claim.

There are also several other important innovations which have brought structural changes to the Code of Civil Procedure, such as a considerable reduction in the number of appeals available, and more rigorous rules for the scrutiny of extraordinary and special appeals to, respectively, the Supreme Court and the Superior Court of Justice – Brazil's higher courts.

Originally published in The International Comparative Legal Guide to: Trade Marks 2-017.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.