Brand register in Brazil follows what is written in the Law of Industrial Property (LPI) No.. 9.279, dated May 14th, 1996. According to the Law, the register order may be required by any interested party, whether physical or legal, Brazilian or from in other countries. Register procedures in Brazil are started with the National Institute of Industrial Property (INPI), an organization linked to the Ministry of Development, Industry and Commerce.
Brand register is granted for a 10year’s period – counting from the date of granting – and may be extended for equal and subsequent periods – by request from its holder. If the register has not been extended during the past 12 months from its ruling or within the additional 6 months deadline after expiring ruling deadline, brand will be declared extinct.
Brazil follows the International Classification of Products and Services, and a register order may comprise one class only. The following documents are required for brand register in Brazil:
a) Power of attorney enough for purposes of representation before INPI;
b) Updated copy of the social contract or statute (to evince activities), in the case of Brazilian Companies;
c) Samples of the brand to be registered – whether it consists of symbols, colors or stylized letters;
d) List of products or services to be covered by the brand.
If the depositor is a foreign company, in addition to the documents mentioned above, there must be a declaration provided by the legal representative in the country of origin, proving that the applicant is a legally constituted company and specifying the activities it develops, which must be directly related to the products/services for which it intends to obtain register in Brazil. Such declaration requires no legalization.
In case the order in the name of the foreign company is deposited with claim for priority, there must be a certified copy of the register order or brand register certificate in the country of origin.
Foreign brands are registered under the terms of the Paris Convention, which establishes a six months’ period of exclusive priority – counting from order date in the country of origin so that its holder may require register in other countries signatory of the referred Convention, such as Brazil.
The main purpose of the brand register within the priority deadline established by the Convention is that the date of deposit in the country of origin will also prevail in Brazil. If the brand is required in Brazil by a foreign person without claiming for the priority established by the Convention of Paris, the brand will be considered Brazilian, and the date of deposit in our country is the one to prevail to all matters of the intended register.
A brand register order at the INPI follows these steps: (i) order presentation; it will be submitted to preliminary formal examination and – if duly instructed – it will be protocolized, and the date of presentation will be considered the date of deposit; (ii) once protocolized, the order will be published for opposition presentation within a 60 (sixty) days’ period; (iii) once finished the opposition deadline, and if it is applied, once finished the manifestation time, examination will be done, during which there may be made demands which must be replied within 60 (sixty) days; (iv) once concluded the examination, decision will be communicated, granting or not granting the register order; and (v) the register certificate will be awarded after order is granted and payment is proven for the corresponding retributions. Nowadays, it takes about 50 months for a register order to be granted by the INPI.
Once register has been granted, brand use is mandatory for its maintenance; that is, if the holder does not use the brand uninterruptedly, register may be declared forfeit, losing all its effects. That is because – after 5 years of the brand register granting date – anyone having a legitimate interest may require forfeit declaration of the register, and in the light of such fact, the brand owner must prove – through dated documents – effective use during the 5 years previous to the forfeit declaration order or justify non-use by legitimate reasons.
If brand use is proven – or if the INPI accepts non-use justification – register will be kept for the ruling decennary period and may be renewed for identical and subsequent periods.
In the terms of the LPI, anyone concerned who feels harmed may petition in court for the nullity declaration of the register awarded by INPI. However, LPI establishes that “the claim to declare register nullity expires in five years counting from the date of its award”.
The right over brand may also be extinguished if deadline expires for ruling, and in the case of total or partial waive related to the branded products or services. Lack of keeping an attorney living abroad by the holder, and brand partial assignment equal or similar, related to identical product or service, similar or akin may also bring forth loss or extinction of registers.