Brazil adopts the Nice Agreement.

INPI publishes its own list of accepted goods and services which conforms to the Nice Classification or publishes office actions if products or services may not be in the correct class.

Trademark applications in Brazil are examined to make sure they are distinctive and to make sure there are no similar prior filed or registered trademarks (this is similar to US, Canadian and Australian trademark law procedures).

Trademark registration process in Brazil is as follows:

After application for trademark registration in Brazil has been filed, INPI will conduct a basic assessment to make sure the trademark application meets formal requirements.

The trademark application will be published in the INPI’s official bulletin only if the minimum requirements are met. The publication is 60 days during which oppositions may be filed. If no opposition is filed, INPI will do a detailed examination of the application and decide whether the trademark can be registered in Brazil. INPI will examine the trademark for distinctiveness and also conduct a trademark search for similar trademarks. Unlike in Europe, if a similar trademark is found it can be a ground for trademark refusal by INPI. For this reason, it is wise to perform a clearance trademark search for confusingly similar trademarks.

What is interesting is that INPI does not communicate with the applicant in case the trademark is refused. Instead, the change of the application’s current status, request for payment of additional fees or further documents are published by INPI in the weekly bulletin. Therefore, the weekly bulletin must be checked on a regular basis and this is one of the reasons for having a local attorney handling the process.

Trademarks that are not distinctive are not registrable. Generic trademarks cannot be registered either. Clearly descriptive trademarks like BEST FOOD for fruits is not registrable. Geographic indications are not registrable as trademarks. Personal names or signatures, family names or patronymic and images of third parties are not registrable, except with the consent of the owner or his/her estate.

In Brazil, trademarks can be categorized as follows:

1) Work marks

2) Figurative trademarks consisting of drawings

3) Combined marks consisting of words and images (Called word and device mark)

4) 3D trademarks

Most commonly filed trademarks are 1, 2 and 3.

We provide a free basic trademark search. We strongly recommend to conduct a trademark clearance search.

Foreign applicants must be represented by a registered Brazilian trademark attorney.

Multiple class registrations are possible in Brazil, however, they are not operational yet and, when they are, we must consider that the official fees for each extra class are the same ones as for an individual application. Considering this, local attorneys in many cases prefer individual applications (for each class) because an eventual denial in one application will not interfere directly in the other(s) by doing so.

While use is not required for trademark registration, a trademark in Brazil may be cancelled by a third party on the basis of non-use it there has been no use for more than 5 years and if there have been no legitimate reasons excusing non-use. Cancellation can be filed only after 5 years counting from the granting and a request is submitted by an interested party only, not ex oficio by the BPTO, and with the payment of a corresponding fee.  The owner of a registered trademark has an onus of proving that the trademark has been in use for the past five years.

The applicant should be capable to prove activity in the classes of the applications; however, the local representative will sign a declaration of such activity at the time of filing. It is not necessary to send a declaration at this time of filing. The Brazilian PTO, however, may ask proof of activity at any time after the application.

A trademark opposition in Brazil may be filed by an interested party within 60 days from the date of its publication. Considering however that the opposition may take months to be published, usually we will know about it in about 06 months from its filing.