Trademarks in Brazil 2024

Trademarks in Brazil 2024

TRADEMARKS 2024

BRAZIL

Philippe Bhering, Jiuliano Maurer

(Bhering Advogados)

LEGAL FRAMEWORK

Domestic law

1. What is the primary legislation governing trademarks in your jurisdiction?

In Brazil, the primary legislation governing trademarks are the Federal Constitution and the Brazilian Industrial Property Law (Law No. 9,279 of 14 May 1996).

International law

2. Which international trademark agreements has your jurisdiction signed?

Brazil is a member of the Paris Convention for the Protection of Industrial Property and of the Agreement on Trade-Related Aspects of Intellectual Property Rights. Also, Brazil has filed with the World Intellectual Property Organization its accession to the Madrid Protocol, which entered into force on 2 October 2019.

Regulators

3. Which government bodies regulate trademark law?

The Brazilian Patent and Trademark Office (BPTO) regulates trademark law. The BPTO is a Brazilian federal authority created in 1970 and linked to the Ministry of Development, Industry and Foreign Trade. It is responsible for the registration of trademarks, patents, industrial design, technology transfer agreements, geographical indications, computer programs and integrated circuit topography.

REGISTRATION AND USE

Ownership of marks

4. Who may apply for registration?

The Brazilian Industrial Property Law (BIPL) (Law No. 9,279 of 14 May 1996) states that natural or legal persons who are subject either to public law or private law may apply for the registration of a mark.

Business entities subject to private law may only apply for the registration of a mark covering activities that such persons effectively and lawfully exercise either directly or through companies that they directly or indirectly control. The products or services covered in the filing petition must fall within the scope of such activities.

Likewise, natural persons may only apply for registration of a mark covering their professional activities.

Scope of trademark

5. What may and may not be protected and registered as a trademark?

The BIPL establishes that any distinctive, visually perceptible sign may be registered as a trademark, provided that it does not fall within the prohibitions arising under Brazilian law. The BIPL also allows the registration of collective and certification marks.

The requisite of a visual representation excludes from the scope of protection non-traditional trademarks, such as olfactory, sound and gustatory marks. On the other hand, the protection of three-dimensional signs – which are considered non-traditional trademarks – has been admitted in Brazil since the enactment of the BIPL in 1996.

The BIPL sets out, in article 124, a list of signs that are not registrable as trademarks. The list includes:

• signs of a generic, necessary, common, usual or merely descriptive character, when related to the product or service to be distinguished, or those commonly used to designate a characteristic of the product or service with respect to its nature, nationality, weight, value, quality and moment of production of a product or provision of a service, except when the sign is presented in a sufficiently distinctive manner;
• signs or expressions used only as a means of advertising;
• colors and their names, except when arranged or combined in an unusual and distinctive manner; and
• names, prizes or symbols of sporting, artistic, cultural, social, political, economic or technical official or officially recognized events, as well as imitations likely to cause confusion, except when authorized by the competent authority or entity promoting the event.

Unregistered trademarks

6. Can trademark rights be established without registration?

The BIPL states that the ownership of a mark is acquired by means of a validly granted registration, following which the title holder has an established right to exclusive use of the trademark throughout the national territory.

However, the BIPL also provides protection for the owners of trademarks that have not yet been registered with the Brazilian Patent and Trademark Office (BPTO).

An example is the right of preference, which establishes that any person who, in good faith, at the date of priority or the filing date of the application, has been using an identical or similar mark for at least six months in the country, to distinguish or certify a product or service that is identical, similar or akin to, is entitled to the right of preference to registration.

Another example is trademarks that are well known in their field of activity, as per article 6bis(1) of the Paris Convention. Well-known trademarks are given special protection, independently of whether they have been previously filed or registered in Brazil. The BPTO has powers to reject ex officio a trademark application that wholly or partially reproduces or imitates a well-known trademark. On the other hand, in the event of the owner of a well-known trademark filing an opposition or an administrative nullity action based on its well-known trademark, it has a period of 60 days commencing with the filing of the opposition or administrative nullity action in which to file an application for the registration in Brazil of its well-known mark.

The BIPL also establishes that signs that imitate or reproduce, wholly or in part, a third-party mark of which the applicant could not be unaware owing to the commercial activity in which he or she engages, are not registrable as trademarks if the sign is intended to distinguish a product or service that is identical, similar or akin to that covered by the existing mark and is likely to cause confusion or association with such a third-party mark. As a consequence, the BIPL enables the owner of a trademark that has not yet been filed or registered in Brazil to challenge third parties who attempt to register similar or identical trademarks. Similarly, to the situation mentioned above, the owner of the trademark has a 60-day term in which to file an application for registration of his or her mark in Brazil, with said period commencing upon the date they filed the opposition or administrative nullity action.

Famous foreign trademarks

7. Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

No. Brazilian laws and regulations do not offer special protection to famous foreign trademarks if not registered and in use in Brazil. For a trademark to be afforded the special protection in all fields of activities, as foreseen in article 125 of the BIPL, the BPTO must recognize its famous status.

To be able to request the recognition of famous status before the BPTO, the owner of the trademark must have a local registration and, according to article 65 of Ordinance 08/2022, demonstrate the famous status by providing evidence of three requirements:

• recognition of the trademark by a large portion of the general public;
• quality, reputation and prestige associated by the public to the trademark and the goods or services it identifies; and
• degree of distinctiveness and uniqueness of the mark in question.

The BPTO allows any type of evidence to demonstrate that the trademark fulfills the three requirements above, but Ordinance 08/2022 brings suggestions of evidence to be presented, such as a market surveys, media plans and materials, articles of various audio-visual, electronic and printed media, brand image surveys with national scope, copies of judicial actions that involved the mark, in particular regarding dilution and unauthorized use, and any other document the trademark holder finds relevant to demonstrate the image and recognition of the mark in Brazil.

On the other hand, in accordance with article 6bis(1) of the Paris Convention, well-known trademarks in their field of activity are given special protection, independently of whether they have been previously filed or registered in Brazil. The BPTO has powers to reject ex officio a trademark application that wholly or partially reproduces or imitates a well-known trademark. Further, if the owner of a well-known trademark files an opposition or an administrative nullity action based on its well-known trademark, it has a period of 60 days, starting on the date of the filing of the opposition or administrative nullity action, to file an application for the registration of such mark in Brazil.

The benefits of registration

8. What are the benefits of registration?

Brazil adopts an attributive system of trademark protection rather than a declarative one. The ownership of a mark is therefore acquired by means of a validly granted registration, following which the title holder has an established right to exclusive use of the trademark throughout the national territory and consequently to prevent third parties from using an identical or similar mark to designate the same or akin goods or services.

Filing procedure and documentation

9. What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

The required documents for the purpose of filing trademark applications in Brazil are a power of attorney and, in the case of a priority claim, a copy of the priority document, comprising all the goods and services to be filed in Brazil.

The rules established in the BIPL govern the representation of the mark in the application (namely, any distinctive, visually perceptible sign may be registered as a trademark in Brazil).

Electronic filing is available. Trademark searches are available but are not compulsory.

As for the procedure and fees, if the applicant is domiciled in Brazil, it can file the trademark application before the BPTO itself. If the applicant is domiciled abroad, it must constitute a legal representative in Brazil to file the trademark application by means of a power of attorney. After paying the official fee of 415 reais (a discounted fee of 166 reais is offered to natural persons, if they are not partners in companies in the same field of the goods or services covered by the trademark application, small businesses, sole proprietorships, cooperatives, educational and research institutions, non-profit entities and public agencies, when referring to their own acts), the applicant must enroll with the BPTO’s electronic system and then complete the application form with the information of the trademark application.

Registration time frame and cost

10. How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

The estimated time frame from the filing until the grant of registration of a trademark takes about 12 to 13 months in the case of smooth prosecution (free of obstacles such as official actions, opposition and rejection).

Usually, the legal fees for obtaining a trademark registration are charged on a fixed-fee basis. Some attorneys, however, charge for prosecuting a trademark application on an hourly rate rather than a fixed-fee basis. The registration of a trademark comes into effect with the publication of the granting decision by the BPTO in the Official Gazette.

The following circumstances may cause deviations from the average time for final registration and, therefore, increase the estimated time and cost of a trademark prosecution:

• opposition filed by third parties;
• official actions by the BPTO in which an applicant is required to present clarification or supplementary documentation;
• rejection of the trademark application; and
• the abeyance of an application pending a decision on a prior application by a third party.

The required documents for the purpose of filing trademark applications are:

• power of attorney duly executed and signed by the authorized officer of the applicant (no notarization or legalization is required), including a clear print of the name and title of the signer below the signature. A simple signed copy sent via email or fax to the applicant’s attorney in Brazil is acceptable to the BPTO. Moreover, the power of attorney can be submitted to the BPTO – if not at the filing – within a 60-day term from the filing date in Brazil through a supplementary petition and additional late filing costs;
• in the case of a priority claim, a copy of the priority application, comprising all the goods and services to be filed in Brazil. The priority documents can be submitted to the BPTO – if not at the filing – within a four-month period from the filing date in Brazil through a supplementary petition and additional late filing costs; and
• in the case of composite or device marks, a clear sample of the mark (usually a high-definition file in .jpeg format) and information regarding any color claim is also required.

Classification system

11. What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

Brazil began to apply the International Classification of Goods and Services (the Nice Classification) in 2000. At that time, the seventh edition of the Nice Classification came into force in Brazil, pursuant to Normative Act No. 150 of 9 September 1999. The 12th edition of the Nice Classification has been in force in Brazil since 15 February 2023.

Given that until 2000, Brazil followed a national classification system, trademark applications filed prior to that year had to be reclassified in accordance with the international classification as and when renewals were sought.

On 6 January 2006, the BPTO issued Resolution No. 123/06, which suspended the force and applicability of the international classification system to trademark applications filed up until 31 December 1999, as well as to trademark registrations granted up until 31 December 1999, and those that had been classified in accordance with the former Brazilian classification system.

As a consequence, applications or registrations filed or granted up until 31 December 1999 were deemed to have been granted or renewed in accordance with the former Brazilian classification system. This resolution is still in force and, for this reason, there are still registrations in Brazil classified under the national classification system.

The system established by the Madrid Protocol, which entered into force in Brazil on 2 October 2019, brings new features such as the possibility of filing a trademark application in more than one class (the multi-class system). However, the BPTO postponed the launch of the system for trademark filing of multi-class applications, which was expected to enter by the World Intellectual Property Organization. A new date for the implementation of the system for trademark filing of multi-class applications has not yet been announced.

Examination procedure

12. What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

In accordance with the BIPL, after an application is filed, it will be published in the Official Gazette to give any interested parties an opportunity to present an opposition within a period of 60 days. If an opposition is filed, the applicant will be notified to respond within 60 days. After the terms for opposition and counterarguments have expired, the examination will be conducted. Potential conflicts with senior trademarks will then be considered.

During the period of examination, official actions or requests may be issued and must be responded to within 60 days. If an applicant fails to respond to an official requirement, the application will be definitively shelved. If, however, a response is filed, the examination will continue, even if the requirement has not in fact been satisfied or if the applicant’s response was to lodge a formal challenge to the official action or request.

In the absence of opposition, the examiner will consider the results of the availability search. If potential conflicts with prior registrations are verified, then the examiner will, ex officio, reject the application. If a possible conflicting registration, which might be cited as grounds for rejection, is under forfeiture or subject to court proceedings or orders, then the examiner will stay the junior application in abeyance pending a final decision in the respective case. The same applies to possible conflicting senior applications that are still under examination.

Although accepted, the BPTO does not consider letters of consent binding on the decision for the registrability of a trademark (namely, even though the BPTO considers the existence of consent by the owner of the senior trademark, this fact per se does not guarantee the allowance of the junior mark).

Once the examination has been concluded, a decision will be issued, either allowing or rejecting the application for registration. In the event of rejection, the applicant will have 60 days to file an appeal to the president of the BPTO.

Use of a trademark and registration

13. Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

When applying for registration in Brazil, there is no need to claim prior use or to submit proof of use of the trademark.

Priority rights are guaranteed for an application for the registration of a mark when an application has been filed in a country that has an agreement with Brazil or filed before an international organization of which Brazil is a member. The application in Brazil must be filed within the time limits established in the agreement, without the occurrence during said time limits of any fact that invalidates or prejudices the application.

The registrant must initiate the use of its trademark within five years from grant. Failing to do so may result, upon the request of any person with a legitimate interest, in the declaration of forfeiture and consequent cancellation of the registration. Likewise, if use of the mark has been interrupted for more than five consecutive years or if, within that time, the mark has been used in a modified form that implies an alteration of its original distinctive character as found on the certificate of registration, the registration may, upon third-party request, be deemed forfeited and canceled.

The use of the mark must include all the products or services mentioned on the certificate, under penalty of partial forfeiture of the registration with respect to those products or services not similar or akin to those for which use of the mark has been proved.

Forfeiture requests will not be admitted if use of the mark has been proved (or if its lack of use has been justified) in earlier proceedings in the past five years.

Markings

14. What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

Trademark registrations can be indicated through the use of the ® symbol, MR (registered mark), and the sign ™. There is no obligation to use these features on registered trademarks in Brazil. The benefits of using them is to provide credibility and security in the eyes of the consumer. There are no risks of not inserting such symbols next to the trademark.

Misuse of these features can be considered (e.g, as misleading advertising and unfair competition).

Appealing a denied application

15. Is there an appeal process if the application is denied?

The applicant may file an appeal against a rejection decision within 60 days. Third parties with a legitimate interest may challenge the appeal within 60 days of the date of publication of notice of appeal.

In the event of the BPTO allowing an application, but subject to limitations or reservations (e.g, without the right of exclusive use of a certain word element), the applicant may file an appeal against the limitation.

The appeal and any challenges to it are analyzed by the president of the BPTO. A decision to uphold the rejection ends proceedings in the administrative sphere. Thereafter, it is possible for the applicant to file a judicial nullity action against the administrative act that upheld the rejection of the application.

In the event of the rejection being overturned on appeal, the allowance of the application will be automatically published, with the start of the period within which the applicant is to pay the final fees for registration.

Third-party opposition

16. Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Once an application is filed, it will be published in the Official Gazette for opposition purposes. Any interested party will have a 60-day term, counted from the date of the publication, to submit an opposition to the application. After the opposition is filed, the applicant is notified to submit a reply within 60 days. Once the opposition and reply terms have expired, the examination of the application is conducted. The BIPL establishes a pre-registration opposition system. As a consequence, oppositions may be filed only against trademark applications.

Once the registration has been granted and published in the Official Gazette, a 180-day term commences in which any person with a legitimate interest may file an administrative nullity action. It is important to highlight that the administrative nullity action may also be commenced ex officio by the BPTO. The registrant will be notified to respond within 60 days. After the term for counterarguments has expired and even if no response has been presented, the issue will be decided by the president of the BPTO. This decision brings the administrative stage to a close.

A registration is subject to a declaration of administrative nullity if the registration was granted in conflict with the provisions of the BIPL. To be successful in an administrative nullity action a third party must demonstrate, inter alia:

• a lack of compliance with one of the legal formalities of the BPTO, essential for the proper processing of the application;
• that the trademark registration infringes one of the provisions of article 124 (signs not registrable as marks) of the BIPL;
• that the sign does not meet the essential requirements to characterize it as a trademark; or
• that the registrant’s commercial or professional activities are not consistent with the products or services claimed in the filing petition.

A brand owner that does not yet have trademark protection in Brazil can oppose a bad-faith application for its mark based on the provisions of article 124, XXIII of the BIPL. This provision specifically establishes that signs that imitate or reproduce, wholly or in part, a third-party mark, of which the applicant could not be unaware owing to the commercial activity in which he or she engages, are not registrable as trademarks, if the sign is intended to distinguish a product or service that is identical, similar or akin to that covered by the existing mark and is likely to cause confusion or association with such third-party mark.

Further, in the event that the bad-faith application matures into registration, the brand owner will have the possibility to file an administrative nullity action against the bad-faith registration based on the same provision. At this stage, it is also possible to file a judicial nullity action against the decision of the BPTO to have the grant decision reviewed by a federal court.

Any person with a legitimate interest, or the BPTO itself, may file a judicial nullity action against the trademark registration. The registrant or the BPTO itself may also file a judicial nullity action again the administrative act that annulled a trademark registration. A declaration of nullity will take retroactive effect from the date the trademark application was filed at the BPTO. A judicial nullity action is statute-barred following the expiry of five years from the date of publication of the granting decision.

In Brazil, nullity actions are statute-barred following the expiry of five years from the date of publication of the granting decision. Notwithstanding this, under the Paris Convention, the five-year rule does not apply for judicial nullity actions based on bad faith. Therefore, an action based on this particular argument is imprescriptible.

Official fees for the preparation and filing of an opposition or a reply to an opposition are approximately US$120 and US$50, respectively. On the other hand, the official fees for preparing and filing an administrative nullity action or a reply to an administrative nullity action are approximately US$200 and US$70, respectively. The US dollar equivalent of official fees (which are fixed in local currency) fluctuates in line with exchange rate variations.

Duration and maintenance of registration

17. How long does a registration remain in effect and what is required tomaintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

The trademark registration remains in effect for 10 years commencing with the date of its grant, and it may be renewed for equal and successive periods. The renewal request must be filed during the last year of the term of the registration and must be accompanied by proof of payment of the respective fee. If a renewal request has not been made by the end of the registration term, the registrant may make such request within the following six months on payment of an additional fee.

According to the BIPL, it is not necessary to submit proof of use of the trademark when applying for registration or when requesting its renewal. The use of the mark needs to be proved only in the event of a forfeiture request being filed by a third party with a legitimate interest.

The registrant must initiate the use of its trademark within five years from its grant or the registration may become forfeit and, therefore, extinct. In the event of the use of the mark being interrupted for more than five consecutive years or if, within that time, the mark has been used in a modified form that implies alteration to its original distinctive character, in accordance with the certificate of registration, the registration may also become forfeit and extinct.

If a forfeiture request is filed, the registrant will be notified to reply within a period of 60 days, the onus being on him or her to prove the use of the mark or to justify lack of use for legitimate reasons. An appeal may be lodged against the decision that either declares or rejects forfeiture of the registration. Forfeiture requests will not be admitted if use of the mark has been proved (or if its lack of use has been justified) in earlier proceedings in the past five years.

The BIPL does not set out specific provisions regarding proof of use. When analyzing the effective use of trademarks, the BPTO will take into consideration all means of proof admitted by law, such as commercial invoices referring to the registered trademark and its owner, advertising materials and catalogues and documents that prove the import or the nationalization of the products in Brazil in the case of products that are manufactured abroad.

Surrender

18. What is the procedure for surrendering a trademark registration?

To surrender a trademark registration, a petition with this specific purpose must be filed before the BPTO. If filed by an authorized agent, the power of attorney must contain specific powers to surrender the registration. The surrender can be total or partial and may be filed at any time after the granting of the registration.

Related IP rights

19. Can trademarks be protected under other IP rights?

If a trademark fulfills the requirements for obtaining protection by another legal institute, such as copyright or design, there is no legal impediment to it.

Trademarks online and domain names

20. What regime governs the protection of trademarks online and domain names?

The BIPL governs the protection of registered trademarks both online and offline. If a registered trademark is used in the composition of a domain name .br, the regulation framework in Brazil provides a specific procedure for challenging such use (namely, the System of Administrative Disputes relating to internet domain names under .br), which is administered by Registro.br, the organization responsible for the registration and maintenance of the domain name .br. This use also can be directly challenged in the judicial sphere.

LICENSING AND ASSIGNMENT

Licenses

21. May a license be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement?

The Brazilian Industrial Property Law (Law No. 9,279 of 14 May 1996) allows the owner or the applicant of a trademark registration to enter into license agreements for the use of the mark without prejudice to their right to exercise effective control over the specifications, nature or quality of the respective products or services.

A license agreement takes effect between the contracting parties from the moment it is executed. However, it must be recorded with the Brazilian Patent and Trademark Office (BPTO) to be enforceable against third parties. It will produce effects in relation to third parties as from the date of its publication in the Official Gazette.

Federal Law No. 14,286/21 removed the obligation to register technology transfer contracts, including trademark license agreements, for the purpose of external remittance of royalty payments. However, the registration of contracts remains mandatory for tax deductibility purposes.

Registration with the BPTO is not necessary to constitute proof of use.

The license agreement usually includes information about the trademark, the registration number, circumstances relating to the exclusivity of the license and whether there is permission to sub-license the trademark, compensation for the use, if applicable, the term of the contract, and governing law and jurisdiction.

Assignment

22. What can be assigned?

Applications and registrations may be assigned on condition that the legal requirements for requesting registration are met by the assignee.

The assignment of a trademark application or registration covers the trademark alone and is not necessary. The goodwill and other business assets need not be assigned for assignment of the trademark to be valid.

The assignment must cover all existing registrations and applications in the name of the assigner in relation to identical or similar trademarks that identify identical or similar products or services, failing which the registrations or applications not assigned may be canceled or deemed abandoned.

Assignment documentation

23. What documents are required for assignment and what form must they take? What procedures apply?

The documents necessary to record a trademark assignment are the following:

• a power of attorney to be executed and signed by an authorized officer of the assignee. There is no need to notarize or legalize this document; and
• an assignment document to be executed and signed by the authorized officers of the assigner and assignee, with all the signatures being notarized before a notary public. The notary should attest that the signatories have the necessary powers to represent the parties in this act. This document must also include the signature and details of the identity of two witnesses (no notarization is required for the witnesses’ signatures).

After the payment of the official fee, the assignee or its representative must file a petition before the BPTO requesting the recordal of the assignment, in which the documentation indicated above is presented. The petition along with the documents are then analyzed by the BPTO. Within approximately two months, the BPTO issues a decision and, if approved, the recordal of assignment is published in the Official Gazette, which finishes the assignment procedure.

Validity of assignment

24. Must the assignment be recorded for purposes of its validity?

The assignment of a trademark application or registration takes effect between the contracting parties from the moment it is executed and signed by the assigner and assignee.

However, to produce effects in relation to third parties, the assignment must be recorded at the BPTO. The assignment will produce effects with respect to third parties as from the date of its publication in the Official Gazette.

Security interests

25. Are security interests recognized and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

Security interests are governed by the Brazilian Civil Code (Law No. 10,406 of 10 January 2002). Of the security interests for which the Brazilian Civil Code makes provision, the one that applies to trademarks is the lien or pledge. The security interest must be recorded at the BPTO to produce effects in relation to third parties. The security interest will produce effects with respect to third parties as from the date of its publication in the Official Gazette.

Pledge agreements that contain references to the amount of the credit, or its estimated value or maximum amount; the time frame for payment of the debt; and the trademark’s specifications are usually accepted for registration by the BPTO. The limitation or onus on the application or registration is then published in the Official Gazette by the BPTO.

ENFORCEMENT

Trademark enforcement proceedings

26. What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialized courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

In addition to the administrative proceedings of opposition and cancellation, the trademark owner can enforce its rights through criminal and civil proceedings, as provided for in the Brazilian Industrial Property Law (BIPL) (Law No. 9,279 of 14 May 1996) in articles 189 and 190 (crimes against marks) and in articles 207 to 210 (civil measures).

Civil proceedings include, for example, applications for injunctions requiring the immediate cessation of the infringement act (the plaintiff may request the imposition of a daily penalty for failure to comply with an injunction or other preliminary relief) and claims for damages.

The judge may grant ex parte injunctions to avoid irreparable loss or harm that would be difficult to repair. The court may, in such circumstances, require the petitioner to post a judgment bond or a fiduciary guarantee. In cases of blatant reproduction or imitation of a registered mark, the judge may order the seizure of all the merchandise, products, objects, packages, labels and other materials that bear the falsified or imitated mark.

A criminal action requires the filing of a criminal complaint, except in the case of the crime against armorial bearings, crests or official public distinctions, be they national, foreign or international, in which case the criminal action will be public (namely, commenced by the public prosecution service). In addition to preliminary criminal search and seizure measures, the trademark owner may request:

• seizure of a falsified, altered or imitated mark at its place of preparation or wherever it is to be found, prior to its unlawful use; or
• destruction of a counterfeit mark on packets or products that contain it, before they are distributed, even in circumstances in which the packages or products themselves appear to have been discarded.

Border enforcement mechanisms are regulated by articles 605 to 608 of Federal Decree No. 6,759 of 5 February 2009. The customs authority may, on its own initiative or at the request of an interested party, seize, during the course of a customs inspection, any products carrying falsified, altered or imitated marks or a false indication of the source. Following seizure, the customs authority is under a duty to notify the trademark owner so that he or she may, within a period of 10 working days, file the respective complaint and request for judicial seizure.

Moreover, in the event of a trademark owner having sufficient evidence of planned import or export of counterfeit goods, it may request that the customs authority seize the goods. The trademark owner will be required to set out the facts or circumstances that justify its suspicion. The customs authority may require the trademark owner to provide a bond in an amount sufficient to cover any loss that may be caused to the defendant in the event of the seizure proving to be unfounded, and as a means of seeking to ensure that the trademark owner’s request is not an abuse of right.

Nullity actions against trademark registration and nullity actions against administrative acts that uphold a rejection decision, or which a trademark registration, are submitted to the Federal Justice of Rio de Janeiro. The Brazilian Patent and Trademark Office (BPTO) is automatically a party in all such court proceedings. Whenever a government agency is a party to a lawsuit, the proceedings must be listed before a federal court. The BPTO head office is in Rio de Janeiro and, therefore, proceedings to which it is a party must commence in the federal court district of that city.

The entry-level (first instance) of the Federal Court of Rio de Janeiro has four courts specializing in intellectual property. At the appeal level, the Regional Federal Court of the Second Region, with jurisdiction over the states of Rio de Janeiro and Espirito Santo, has two specialist panels for intellectual property.

Infringement actions must be filed before state courts, as the BPTO does not participate in such proceedings. There are no specialist state courts handling trademark infringement cases.

Procedural format and timing

27. What is the format of the infringement proceeding?

Discovery, in the form that exists in common law systems as a pretrial phase in a lawsuit, is not provided for in the Brazilian legal system.

According to the Brazilian Code of Civil Procedure, the parties can resort to the following mechanisms (inter alia) to obtain evidence for legal proceedings:

• personal deposition;
• exhibition of documents or other material;
• witness testimony; and
• expert evidence and court inspection.

In addition, the Code of Civil Procedure also permits the filing of a request for early production of evidence. This measure allows one party to request the live testimony of the opposing party or witnesses, or the undertaking of an expert examination when there are reasonable grounds for fearing that the evidence may be lost or for some other urgent reason. The application for early production of evidence may be filed prior to the commencement of the substantive proceedings. Such an application may also be made following the commencement of proceedings – in these circumstances, the party seeking the direction must demonstrate that it could not reasonably be expected to wait until the time at which the evidence would normally be adduced in the proceedings.

Once a civil trademark infringement action is filed, the defendant is notified to present his or her response within 15 days. The plaintiff may respond to the defendant’s answer within 10 days. There are usually two hearings at first instance:

• a conciliatory or preliminary hearing, in which the parties try to settle the case amicably; and
• an evidentiary hearing, in which the expert and the parties’ technical assistants may be cross-examined on their findings, in the event of a dispute between them (the relevant questions having been filed and responded to in writing prior to the hearing – the scope of the cross-examination being issues that remain in dispute), and depositions are taken from the parties and the witnesses listed are heard. It is important to note that this second hearing occurs only in cases where there is a need for evidence to be produced.

A final decision on a civil infringement action may take between one and two years at first instance. This time frame will vary in accordance with the state and court in which the lawsuit is filed.

Burden of proof

28. What is the burden of proof to establish infringement or dilution?

The burden of proof system is ruled by the Civil Procedure Code, which apportions the burden of proof equally between the disputing parties.

The plaintiff bears the burden of proving the facts it claims support its right. The defendant has the burden of proving facts that impede, modify or terminate the plaintiff’s right. If the defendant merely denies the fact on which the plaintiff’s plea is based, the burden of proof remains on the plaintiff.

In general, in infringement actions, the plaintiff has to prove the offence against its trademark rights and the defendant has to demonstrate that no offence was committed.

Since 2003, the Superior Court of Justice has consolidated the view that proof of the violation of a trademark right is sufficient in itself to give rise to a right to damages independently of any evidence of harm caused to the injured party.

In relation to the quantum of damages, the BIPL applies a triple criteria calculation, as follows:

• the benefits that would have been gained by the injured party if the violation had not occurred;
• the benefits gained by the author of the violation of the rights; or

the remuneration that the author of the violation would have paid to the proprietor of the violated rights for a license that would have legally permitted him or her to make use of the protected rights.

Standing

29. Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

The trademark owner is entitled to have recourse to the courts in the event of trademark infringement. Licensees and distributors may also file suit in response to an alleged trademark violation, provided they have been invested by the trademark owner with full powers to act in defense of the mark.

The same conditions apply to criminal complaints.

Border enforcement and foreign activities

30. What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

It is prescribed in article 198 of the BIPL and in article 605 of the Brazilian Customs Regulation (Decree No. 6,759/09), that products bearing counterfeited, altered or imitated marks, or that show a false indication of source may be seized by customs authorities, during verification procedures, ex officio or at the request of the interested party. Also, article 608 of the BCR states that the owner of the trademark, having sufficient evidence to suspect that the importation or exportation of counterfeit trademark goods may occur, may request its retention to the customs authority, presenting the particulars that indicate the suspicion.

After the seizure of the products, the customs authorities will notify the owner of the trademark, whereupon the owner has 10 days to instruct the final seizure and destruction of the goods. The deadline can be extended for another 10 days if the owner of the trademark files a justified request. If the owner of the mark refrains from taking action within the aforementioned deadline, the customs authorities may release the seized goods, if they fulfil the import and export conditions.

Activities that take place outside the country, without producing direct effects in the country, may be cited in an infringement action as additional arguments.

Discovery

31. What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

The discovery procedure, as conceived in common law systems as a pretrial phase in a lawsuit, is not applicable in Brazil.

To obtain evidence in legal proceedings, the parties can request directions, inter alia, for the following:

• personal deposition by a party;
• exhibition of documents or other material;
• witness testimony;
• expert evidence;
• documentary evidence; and
• court inspection.

In addition, the Code of Civil Procedure also permits an application for early production of evidence.

Timing

32. What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

A final decision on a civil infringement action may take between one and two years at first instance. A final decision on second instance may take up to two years. These time frames will vary according to the complexity of the case, and the state and court in which the lawsuit is filed. Preliminary injunctions may be granted immediately, provided that the legal requirements are met.

Limitation period

33. What is the limitation period for filing an infringement action?

The general understanding is that the limitation period for filing an infringement action is 10 years, according to the provision of article 205 of the Brazilian Civil Code (Law No. 10,406/2002). This period starts counting from the last unauthorized use of the trademark.

If the court action is based on bad faith, there is no limitation period, according to the provision of article 6bis(3) of the Paris Convention.

Moreover, the BIPL prescribes in article 225 and the Superior Court of Justice establishes in its Precedent 143 that the limitation period for a court action seeking damages compensation for the unauthorized use of a trademark is of five years.

Litigation costs

34. What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

The attorneys’ fees associated with a civil trademark infringement action may vary according to the complexity of each case and according to the professional rates charged by the assigned counsel.

Court fees are fixed proportionally to the amount in issue estimated by the plaintiff.

Usually, the legal fees for filing an infringement action, for filing an appeal against the final decision at first instance and for filing an appeal to the Superior Court of Justice against a final decision at second instance are charged on a fixed-fee basis.

Some attorneys, however, charge for such proceedings, and for trial preparation and advocacy on an hourly rate rather than a fixed-fee basis.

Additionally, many attorneys charge a success fee, which may also be payable if the disputing parties reach a settlement.

Appeals

35. What avenues of appeal are available?

The Brazilian Civil Procedure Code sets out various avenues of appeal, to which parties in trademark infringement proceedings may resort. There are both appeals on the merits (substantive issue) of a case and appeals on procedural grounds or relating to questions other than the substantive issue.

The possible forms of appeal include motions based on conflicting case law, motions for clarification of the ruling and appeals based on internal court rules.

The final decision of the first instance court, for example, may be challenged on appeal before the state court of appeal by means of an appeal. From the appeal court, a further appeal is possible on issues pertaining to federal law, to the Superior Court of Justice or, in the event of a constitutional issue arising, to the Federal Supreme Court.

Defenses

36. What defenses are available to a charge of infringement or dilution, or any related action?

In a civil infringement action, the defendant in its reply may assert facts that impede, modify or terminate plaintiff’s right or simply present a general denial. In addition to its reply, the defendant may also file a counterclaim against the plaintiff, if the legal prerequisites are duly met.

One commonly used argument asserted by defendants is that there is a lack of confusing similarity between the confronting signs.

The right of preference may also be asserted in the defendant’s reply.

In relation to criminal actions, an allegation of nullity of the registration on which the action is based may be relied upon as a defense. Acquittal of the defendant, however, will not automatically lead to nullity of the registration, which can only be requested in an action before the competent courts.

Remedies

37. What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The civil remedies include an order for the immediate cessation of the infringing act (the plaintiff may request the imposition of a daily penalty for failure to comply with a preliminary injunction or with a first-instance decision) and compensation for the unauthorized use of the trademark.

In a lawsuit filed seeking cessation of the infringing act and an award of damages, the judge may grant an ex parte preliminary injunction to avoid irreparable loss or harm that would be difficult to repair. The court may, in such circumstances, require a petitioner to post a bond or a fiduciary guarantee. In addition, in cases of blatant reproduction or imitation of a registered mark, the judge may order the seizure of all the merchandise, products, objects, packages, labels and other materials that bear the counterfeit or imitated mark.

As for the quantum of damages, the BIPL applies a triple criteria calculation, as follows:

• the benefits that would have been gained by the injured party if the violation had not occurred;
• the benefits gained by the author of the violation of the rights; or
• the remuneration that the author of the violation would have paid to the proprietor of the violated rights for a license that would have legally permitted him or her to make use of the protected rights.

Criminal remedies include:

• preliminary criminal search and seizure measures;
• imprisonment of the infringer; and
• fines.

In criminal proceedings, the trademark owner may request, in addition to preliminary criminal search and seizure measures:

• the seizure of a falsified, altered or imitated mark at its place of preparation or where it is found, prior to its unlawful use; or
• destruction of a counterfeit mark on packets or products that contain it, before they are distributed, even if the packages or even the products themselves have been discarded.

Further, the BIPL establishes that anyone who reproduces a registered mark wholly or in part, without the authorization of the registrant, or imitates it in a manner that may induce confusion, or alters the registered mark of a third party already applied to a product placed on the market, is subject to:

• imprisonment for a period of three months to one year; or
• a fine.

The same penalty applies to anyone caught importing, exporting, selling, offering or exhibiting for sale, hiding or maintaining in stock:

• a product branded with an illicitly, wholly or partially reproduced or imitated mark of a third party; or
• a product from the accused’s industry or commerce, held in a vessel, container or package carrying a legitimate mark of a third party.

ADR

38. Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

The BIPL does not have any provision related to ADR. Arbitration proceedings are governed by the Arbitration Law (Law No. 9,307 of 23 September 1996). Although arbitration is not commonly used in trademark infringement cases, the parties may agree to arbitration instead of resorting to the courts. Among the possible benefits of using arbitration are the comparative speed of proceedings and their confidentiality. However, in the event of a party needing, for example, injunctive relief for the immediate cessation of use of a confusingly similar mark and, by consequence, the immediate cessation of the sale of products identified by said mark, arbitration would not be an advisable way of proceeding.

UPDATE AND TRENDS IN TRADEMARKS IN BRAZIL

Key developments of the past year

39. Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

The Brazilian Patent and Trademark Office (BRPTO) concluded, on 16 November 2022, the implementation of the system updates for the receipt and processing of applications for position marks, which is allowed for registration in Brazil since 1 October 2021, when Brazilian Patent and Trademark Office (BPTO) Resolution No. 37, of 13 September 2021, came into force. Such implementation allowed the BPTO to start processing the applications for position marks filed between October 2021 and November 2022 and receiving new applications for such types of marks.

According to the BRPTO, the number of trademark filings in 2022 has increased by 3.9 per cent per cent in comparison to the previous year. During 2022, 398,811 trademark applications were filed with the BRPTO. Also, the number of decisions regarding the registrability of trademarks increased by 12.81 per cent in comparison to the previous year.

The BRPTO completed the necessary updates on its system for adopting the latest edition of the Nice Classification (NCL 12) for trademark applications. NCL 12 came into force in Brazil on 15 February 2023.

The General Coordination of Technology Contracts of the BRPTO announced Ordinances No. 26 and 27, of 7 July 2023, which promoted changes in the formal and technical aspects of the registration of technology transfer contracts, including trademark license agreements, before the BRPTO, including:

• removal of the obligation of notarization and apostille or consular legalization in documents digitally signed abroad;
• acceptance of digitally signed documents without ICP-Brazil;
• removal of the obligation of two witnesses to sign contracts executed in Brazil;
• removal of the obligation to send the Articles of Incorporation along with petitions filed in connection with registration of agreements or requests for registration of technology transfer agreements;
• removal of the obligation of the parties to place their initials on all pages of agreements submitted for registration;
• removal of the obligation to submit the licensee’s registration form; and
• acceptance, in the Certificates of Registration, of the declared value of contracts involving only trademark applications.

Such flexibilities reflect the entry into force of Federal Law No. 14,286/21, which removed the obligation to register technology transfer contracts for the purpose of external remittance of royalty payments. The registration of contracts remains mandatory for tax deductibility purposes.

* The information in this chapter was accurate as at August 2023.

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