Questions and Answers: Trademarks

First of all, it is advisable to carry out a prior search of the brand to find out if there is already one deposited or registered in the intended area of activity. It should be noted that, in some cases, even if no prior information is available, a more accurate consultation is essential, since the Industrial Property Law provides for several exceptions of signs that cannot be registered (23 only in Article 124 of Law No. 9,279 / 96 ), and these, certainly, if they are consulted considering only the previous one, will not appear in the search, inducing that there is no previous record. The trademark application must be requested in a specific form, the due fee must be collected and certain documents are attached and others are presented for verification, as the case may be. In order to carry out the search or make the deposit, the interested party must go to the headquarters of the INPI or to one of the Precincts or Representations of the Agency, existing in the Brazilian states, or to look for an Agent Accredited by the INPI.

The visually perceptible distinctive signs, which are not included in the legal prohibitions (art. 122 of the IPL), are registered as trademarks. Therefore, this legal rule provides that:

Irregistrable signs are included in art. 124 of the LPI. Brazilian trademark law does not protect audible, gustatory and olfactory signs.

It consists of one or more words in the broad sense of the Roman alphabet, also comprising neologisms and combinations of letters and / or Roman and / or Arabic numerals.

It consists of a drawing, figure or any stylized form of letter and number, in isolation.

It is the one constituted by the combination of nominative and figurative elements or nominative elements, whose spelling is presented in a stylized way.

It is the one constituted by the plastic form of the product or packaging, whose form has a distinctive capacity in itself and is dissociated from any technical effect.

It is the one that aims to identify products or services from members of a specific entity.

It is the one that attests the conformity of a product or service with certain norms or technical specifications, notably in terms of quality, nature, material used and methodology used.

The registered trademark guarantees exclusive ownership and use throughout the national territory, for ten years. The holder must keep it in use and extend it every ten years.

The registration of the trademark is extinguished by the expiration of the term, by the resignation (voluntary abandonment of the owner or by the legal representative), by the expiry (lack of use of the trademark) or by non-compliance with the provisions of art. 217 of the LPI.

The individual may apply for the registration of a trademark, provided that it proves the activity performed, through a supporting document, issued by the competent body. Professional qualification is verified before the agency or entity responsible for registration, registration or registration.

The progress of the processes must be accompanied by the official publication, that is, the Industrial Property Magazine - RPI (currently only in digital format), which can be requested at the INPI headquarters in Rio de Janeiro or at its police stations and offices, existing in the Brazilian states. This official publication takes place weekly, and the deadlines to be met, when published, are in the majority of 60 days.

For the registration of a trademark, the interested party will pay an initial fee corresponding to the filing of the application. In the absence of procedural obstacles (requirement, opposition, etc.), the fee for the protection of the first decade and the issuance of the registration certificate must be paid at the end of the examination. For microenterprises and individuals, the deposit and first decade values of the brand are reduced by 50%.

The prior search for a trademark is not mandatory, however, it is advisable for the interested party to carry it out before making the deposit, in the class that the sign aims to mark, in order to check if there is already a trademark previously deposited / registered.

The transfer request can be made at any time after filing the trademark application.

The trademark registration will be in force for a period of ten years, counting from the registration granting date, extendable for equal and successive periods. The request for extension must be made during the last year of the registration, accompanied by proof of payment of the respective fee. If the request for extension has not been made by the end of the term of the registration, the holder may do so within the following 6 (six) months, upon payment of an additional fee.

The trademark registration system adopted by Brazil is attributable in law, that is, its ownership and its exclusive use are only acquired through registration.

Any person who, in good faith, used the country for at least 6 (six) months, identical or similar mark, for the same activity or similar activities, can claim the right of precedence to the registration.