Trademark requirements in Brazil include that marks be visually perceptive and distinctive, with no need to show intent to use. Foreign entities must retain a properly qualified Brazilian attorney. Slogans and personal names cannot be registered as trademarks. Well-known marks receive protection even if unregistered, while high renown marks receive special protection across all industries. Evidence like market surveys and trademark usage data can prove a mark is well-known. Applicants should conduct trademark searches, file broad specifications, and emphasize principles of trademark law before the Brazilian Patent and Trademark Office.

1. TRADEMARK AND BRANDINGTRADEMARK AND BRANDING
LEGAL ISSUESLEGAL ISSUES
PRACTICE TIPS & TRENDSPRACTICE TIPS & TRENDS
BRAZIL

2. INTRODUCTION
“Brazil is the country of the future,
and always will be.”
Attributed to Stefan Zweig
Viennese-born writer

3. Trademark Requirements
▪ Visually perceptive distinctive signs – sounds, smells and motions are not
registrable
▪ No need to show "intent-to-use"
▪ Affirmation client carries out goods/services covered
▪ Power of Attorney
▪ First-to-file principle
▪ Foreign entity must retain a properly qualified attorney domiciled in Brazil
▪ Multi-class applications are not permitted

4. Art. 124 (VII) Prohibits the registration of Slogans - Signs or
expressions used merely as a means of advertising.
Trademark PTO Decision
LOOKING FORWARD, KEEPING CLOSE

5. Article 124 (XV) Prohibits the registration of Legal Name or
Signature.
This includes family name or patronym and the image of third parties,
except by consent of the owner, his heirs or successors in title.
Case studies:
▪JAMES WALKER
▪MARTIN BAKER
▪LAURA ASHLEY

6. JAMES WALKER

7. LAURA ASHLEY

8. Article 124 (XIX) Prohibits the reproduction or imitation, either wholly or in part, even with
additions, of another person’s registered trademark to distinguish or certify identical, similar or
related products or services, which is liable to cause confusion or association with the other
person’s mark
Linco Food Systems AS Nordischer Maschinenbau Rud.
Baader GmbH + Co. KG
Not acceptable:
•Letter of Consent
•Declaration from Managing Director
•Proof same partners in companies
Acceptable:
•Articles of Incorporation
•Memorandum of Association,
Company statutes and Bye –laws –
showing a legal relationship

9. BAADER GROUP OF COMPANIES

10. Well-Known Trademarks
▪ Article 126 of IPL – trademarks well-known in their field of activity within the terms
of paragraph (1) of Article 6bis of the Paris Convention;
▪ Article 158, § 2 of the IPL expressly sets out conditions required for the
enforcement of rights associated with unregistered well-known marks.
▪ Art. 124 (XXIII) IPL
▪ a sign that imitates or reproduces, either wholly or in part, a trademark which the
applicant clearly could not be unaware of as a result of his activity, in the
name of a person established or domiciled in Brazilian territory or in a country
that is bound to Brazil by agreement, or that assures reciprocity of treatment, if
the mark is intended to identify identical, similar or related products or
services liable to cause confusion or association with the other person’s mark.
(Complies with Article 16.3 TRIPs

11. Suggested Evidence to prove a trademark is well known.
▪ Date of first use of the mark in Brazil;
▪ Actual or potential consumers of the products or services identified by the mark;
▪ Length of time during which the mark has been effectively used in Brazil and abroad;
▪ Length of time during which the trademark has been publicized in Brazil and abroad;
▪ Channels of trade in Brazil and abroad;
▪ Amounts invested by the owner in publicity/advertising of the trademark in Brazilian media
recently;
▪ Opinion poll surveys or market surveys demonstrating market share;
▪ Surveys demonstrating prompt identification of trademark by standard consumers;
▪ Geographic scope of the effective retail of goods/services by the trademark mark in Brazil
and abroad;
▪ List of countries where the trademark has been registered as well as uncertified copies of
the registration certificates.

12. High Renown Trademarks
Trademarks of “High Renown” well-known in its area of activity (Art. 125 IPL)
special protection in all fields of activity
a) The trademark is known by a large part of the public;
b) Quality, reputation and prestige of the products/services that the public
associates with the brand;
c) Degree of distinctiveness and exclusivity of the trademark in question
PTO Fee - USD 12,100.00

13. List of Current High Renown Trademarks

14. Tips
▪ Always conduct a Trademark search and supplement the results with local
counsel in Brazil.
▪ File specifications as broad as possible – leaving room for negoatiations with the
owners of prior possible conflicting trademarks.
▪ Start using a trademark after registration.
▪ Emphasizes the pricinciple of “telle quelle” along with Article 6 quinquies of the
Paris Convention in Oppostions and other actions before the PTO.

15. Kris Williamson
Partner – Lext Intellectual Property LLC
Barrister (England & Wales)
Attorney (Brazil)
LEXT Intellectual Property LLC
Rua Gavião Peixoto 124, Salas 603 &
604 Icaraí, Niterói – RJ – 24230-101
Brazil
Tel.: +55(21) 3254 7588
Cel.: +55(21) 99109 0533
Site: http://www.lext.com.br
email: info@lext.com.br
Twitter: Lextprop