Trademark registration in Brazil - The ultimate guide

As the largest economy in Latin America and the ninth-largest economy worldwide, many foreign investors looking into the region are considering doing business in Brazil. Establishing a commercial presence in Brazil gives companies easy access to other countries in the region and allows them to take advantage of strategic trade agreements.

Given Brazil's "First-to-File" system, obtaining trademark protection is highly recommended, even if branded products are not yet sold in the country. Any business wishing to ensure that its brand is well-protected before expanding internationally should have Brazil as a priority country on its trademark list.

The National Institute of Industrial Property (INPI) is responsible for examining, granting and administering intellectual property rights (patents, trademarks and designs) in Brazil.

Brazil is a so-called "First-to-File" jurisdiction, meaning applicants who first apply for a trademark are assigned trademark rights and given priority over others, regardless of the actual use of the trademark in commerce. 

It generally takes 24 to 36 months to register a trademark (from filing the application to the final decision), provided there is no objection or opposition lodged against your application. In the event of opposition, the process may take several years.

The fee for filing a trademark application (with the preapproved list of goods and services from which you can select your terms, amount per class): R$355 (approx. $68) (*discounted fee: R$142, approx. $27)

The fee for filing a trademark application (without the preapproved list of goods or services): R$415 (approx. $80) (*discounted fee: R$166, approx. $32)

(*) Discounted fee: Reduction by up to 60% of the official fee to be obtained by: individuals (only if they do not hold any corporate interest in companies that operate in the area to which the item to be registered belongs); micro-enterprises, sole proprietors, and small-sized companies, as defined by Complementary Law No. 123 of December 14, 2006; cooperatives, as defined by Law No. 5,764 of December 16, 1971; educational and research institutions; nonprofit entities, as well as public bodies, when acting on their own account, as established in this resolution.

Applications for the registration of trademarks in Brazil can be filed by the applicant directly. However, foreign applicants must designate a qualified representative who must be resident in Brazil and who must have a licence of an attorney, including powers to receive notifications. This person may be either an IP agent or a specialised lawyer (traditionally).

For a trademark to be eligible for registration, it has to meet specific criteria, one of them being distinctiveness. As the purpose of a trademark is to distinguish a recognisable source of goods or services to the consumer, only a sign with at least a minimum level of a distinctive character can achieve this purpose without consumer confusion. The more descriptive or customary a name, logo, or any other brand elements are, the less likely they will be registered by the INPI. You can learn more about registration requirements and the distinctiveness of trademarks by visiting our Trademark Academy.

Another important step in applying for a trademark is ensuring that it is not confusingly similar to already registered marks. Many starting businesses that tried to register their trademarks without prior research have either suffered rejection directly from the INPI or received opposition from their competitors who registered their marks prior to them. In trademark law, those owners who filed their trademarks earlier have way stronger positions over all the similar marks applied for later (as the owners of prior rights can, for example, attack the new similar applications in the opposition proceedings), even if the registration process was not yet completed. As a result, the INPI, in general, recommends searching their trademark database before submitting an application.

By Internet:

In person: 

When the INPI receives the documentation, it checks for formal errors (incorrect data, non-payment of the administrative fee, lack of documents, etc.) If any deficiencies are detected, an announcement is published in the Official Intellectual Property Gazette (Revista da Propriedade Industrial (RPI)) so that these can be corrected within five days of publication. Applicants are then given an opportunity to respond to such objections and, if appropriate, to amend the application.

After it has been checked and there are no formal deficiencies or objections (e.g. mark examined as non-distinctiveú (or they have been corrected) an announcement is published in the RPI so that third parties can oppose the application within a 2 months period.

If there is no third-party opposition or after all opposition has been resolved, the examination process will commence. During the examination process, an examiner may issue official actions, of which, you will have to respond within 60 days. An examiner may object, for example, on grounds that your mark lacks distinctiveness or falls outside the scope of registrable trademarks.

If the application passed the opposition period or it had been cleared of any opposition proceedings, INPI will proceed and mark the application as registered, for which the fee for the first ten years’ registration and the registration certificate must be paid. The applicant has 60 days to pay the fee from the date on which the INPI published the information about granting the trademark. After such a period has expired, it is still possible to pay the fee during the subsequent 30 days (but with a supplement fee). Finally, the trademark is registered, and the corresponding legal certificate is issued.

After publication in the Official Intellectual Property Gazette, there is a 60-day period during which third parties whose rights are affected may file oppositions with the INPI. If an opposition is filed, the applicant will be notified and given 60 days to reply.

Time: An opposition proceedings before the INPI can take as long as two to four years or even longer.

Cost: 

Fees must be paid within the time limit set by the INPI. If not, the INPI will not consider the opposition or the response. Additionally, as the opposition proceedings can take up to 2-4 years, the total cost of legal proceedings can add up to tens of thousands of dollars.

A Brazilian trademark gives protection for 10 years from the date on which the trademark is granted. This can be renewed indefinitely for 10-year periods. There is a possibility to extend the deadline for renewal for an additional cost.

Renewal fee (within the official date, amount per class): R$745 (approx. $142)  (*discounted fee: R$298 (approx. $57)

Renewal fee (paid after the official date expired - within an extended period, amount per class): R$1115 (approx. $213) (*discounted fee: R$446 (approx. $85)