Intellectual Property Rights and trademarks in Brazil

Trademark

It is vital for companies seeking to protect their brand to register a trademark, especially for those doing business in a developing country. Innovation Norway gives advice on how to protect and exploit your IPR (trademark, design, patents and intellectual property, etc.) for commercial purposes. This service is offered to Innovation Norway’s customers with innovative projects that are in need of guidance related to how IPR can be protected and applied in business development.

For individuals and businesses who work with innovation projects, it is important to monitor their own IPR, find out what can be protected, freedom to operate, clarifying ownership and how the intangible values can be exploited commercially. Conscious handling of IPR in business development can:

  • help businesses to avoid developing already known technical solutions;
  • reveal opportunities for protection and what kind of protection to choose;
  • boost earnings by making use of IPR in business development;
  • prevent the company unconsciously infringes other company’s rights which may result in major cost.

Innovation Norway contributes to gather the right information to make assessments of the IPR situation. When the information is analyzed, the customer will make better decisions about protection and commercial exploitation of their IPR. We give independent guidance regarding basic information about IPR system. It is important for a business to have a correct understanding of the complexity of the IPR system, international relations, costs, deadlines and enforcement of their rights.  We provide guidance and clarification on whether the project is innovative and unique. This also provides information about who the competitors and potential partners are. It is important for a customer to clarify if the innovation can be protected, in what way and how. And furthermore, clarify ownership and whether they violate the IPR rights of others.

Registering a Trademark

In Brazil, the governmental body responsible for the regulation of trademarks is Instituto Nacional da Propriedade Industrial (INPI, or National Institute of the Industrial Property).

The numbers in this sector help to illustrate the importance of the trademark process. In Brazil over 163,000 trademark applications were filed in 2013 alone. According to INPI these figures are the highest since the year 2000 which is when results in this format were first available.

The number of registered trademarks does not follow the same rhythm. In 2013, around 36,900 trademarks were registered and more than 7,000 were renewed. This can be partly explained as while it is relatively simple to apply for a registration, the process is very time consuming. Additional information is commonly requested during the process, increasing the time frame. If a company or individual raises an opposition to the trademark registration it will certainly make the process even longer.

According to the Brazilian law, a trademark is a visually perceptible sign that identifies and distinguishes products and services. Once the trademark is issued, the registration will be valid nationwide. Nevertheless, it is important to check that no equivalent trademark has already been registered before initiating the process. Then it is necessary to define the type and presentation format of the trademark.

There are four types of trademark in Brazil:

  • Product trademark, which distinguishes between identical or similar products;
  • Service trademark, which distinguishes between identical or similar services;
  • Collective trademark, which identifies products or services from a certain group or entity;
  • Certification trademark, which aims to prove that the products or services follow the requirements of certain norms or technical specifications.

There are also four types of presentation format:

  • Nominative, for when there are only letters and numbers on the trademark;
  • Figurative, for when the trademark is composed of images, drawings and similar representations;
  • Mixed, for when there are both nominative and figurative elements;
  • Tridimensional, for when the trademark is composed by 3-D elements.

Online registration step by step

You can apply to register a trademark either online or via a form that can be sent directly to INPI. Both of these options have similar procedures.

The entity’s recommendation is to apply via the website as this is cheaper, more simple and can be done at any time. More than 77% of applications are made online. The step by step guide to obtain a trademark registration via the website is:

  1. Register on INPI’s website under the Módulo de Seleção de Serviços tab;
  2. Issue of Guia de Recolhimento da União, known as GRU, which is the payment collection form;
  3. Pay the stipulated fee using GRU;
  4. Send the application via the section e-Marcas on INPI’s website;
  5. Monitor the Formal Examination process, providing any additional required documents or information; it is possible to subscribe for push notifications by registering at Push-INPI on their website;
  6. Wait for the publication of the application and/or any opposition by third parties;

After the publication of the request other companies and individuals then have a period of 60 days to challenge it. If there are any oppositions, INPI analyzes if the opposition is valid, and that can take up to 2 years to complete. If the opposition is accepted, the applying company is notified and has a period of 60 days to answer it. After that opposition is resolved, the application is then sent for technical examination. You are then required to:

  1. Check the results of the technical examination and answer any requirements made within 60 days after they were completed;
  2. Pay final fees and the 10-year trademark protection fee so that the certificate can be issued;

The applicant has 60 days to pay the certificate fee. It is possible to extend this deadline to 90 days, as long as the applicant pays the additional costs involved.

After the first 10 year period, trademarks registration rights can be renewed indefinitely, as long as the required fees are paid.

Prices and Fees

Details of all the fees that must be paid during the trademark registration process can be found on INPI’s website, in Portuguese. Some of the main fees regarding online applications are listed in the table below. The “application with discount” can be obtained by individuals, micro companies and small size companies. Prices for requests made via printed form are either similar or more expensive than the ones listed above. For example, the Application for Trademark Registration will cost BRL 530.00 instead of BRL 355.00 (or BRL 212.00 instead of BRL 142.00).

Regular (in BRL) With discount (in BRL)
Application for Trademark Registration 355.00 142.00
Opposition 355.00 142.00
Certificate and first 10 years of trademark rights (60 day period) 745.00 298.00
Certificate and first 10 years of trademark rights (90 day period) 1,115.00 446.00
Renewal of registration 1,065.00 426.00
Official copy of the registration 140.00

 

Innovation Norway is responsible for promoting the Norwegian industry abroad. Our office in Rio de Janeiro manages Innovation House Rio, our business incubator office, and helps Norwegian companies in their efforts towards the Brazilian market.

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Posted in Brazil
One comment on “Intellectual Property Rights and trademarks in Brazil
  1. Shira says:

    Thank you for the helpful information. Would you kindly you clarify for us how one pays the GRU form once it has been generated by INPI? Can one pay the Banco de Brazil online or must one have a presence in Brazil to do so? Thank you very much.

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