We recently spoke with Marcello do Nascimento regarding trademark and brand protection strategies in Brazil.  Marcello is the managing partner of David do Nascimento, an IP boutique firm with offices in São Paulo city and Rio de Janeiro city.  Marcello is a recognized IP leader in Brazil and the international trademark community.

Thank you, Marcello.  Please tell us a little about your trademark and brand protection practice.

I have practiced IP all my professional career. Our firm was started by my father in the year of 1970 and it was always an IP boutique. I started very early in 1985 when I was still in the University in the law school. I graduated in 1988 and soon afterwards became a partner of the firm. I am currently the managing partner of the firm which has a total team of 100, including five partners and thirty IP professionals, including trademark and patent attorneys.

As I have always been leading the development of International clients, I know deeply the needs of these international companies.  My professional expertise includes assisting foreign clients in trademark prosecution and enforcement in our country. Both can be very challenging due to significant bureaucracies of our governmental institutes and Courts. Among my experience in brand enforcement I have been assisting major IP owners in the different areas of business, including entertainment, sportswear, and electronics.  Building an effective enforcement plan in our country is vitally important.

Why and when should international companies seek to register their trademarks in Brazil? 

With limited exceptions, Brazil is a “first to file” country and consequently having a prior filing date is very important to avoid possible significant difficulties in obtaining a trademark registration.

This means that the filing in Brazil shall take place the sooner possible in order to avoid that third parties proceed first, what would cause the necessity of the true owner of the mark to adopt measures to attack the prior application/registration, in order to obtain its own registration. This can be avoided by having a prior filing date. As per our experience it is a common behavior that Brazilian possible distributors of certain products/services of foreign companies immediately register the trademarks of the foreign companies (without authorization), even if no actual commercial relationship has initiated and there is normally significant difficulties to have the marks assigned to the right owners.

Trademark registrations are very important to secure the use in our country and take action against possible infringements.

What are the general steps in seeking a trademark registration?

We normally advise conducting a prior availability search in order to determine if the mark is available to registration in the classes of interest and after that, the filing at BPTO is necessary. It is possible to claim priority of a foreign application filed in the last 06 months, if applicable. Brazilian registration procedure is fairly straight forward since there is a single examination including possible oppositions from third parties and BPTO`s own, “ex officio”, substantive examination. Please note that once a trademark is allowed to registration it is mandatory to proceed with the registration fees payment in order to have the trademark duly granted and the Certificate of registration issued and if such registration fees are not paid the trademark application will be definitively withdrawn and a new filing would be necessary to protect same.

What are the greatest risks to companies who do not seek registration?

They are exposed to trademark infringement actions by third parties that may have rights over same/similar marks, protecting same or related goods/services. In case of trademark infringement, Brazilian laws provide several remedies including civil and criminal claims. A civil claim can request the infringer to immediately refrain from using the mark under penalty of paying a daily fine and also claim damages for the unauthorized use. It is also possible to obtain preliminary injunctions in order to  have the infringer immediately stopping using the mark (including exporting, importing, and commercializing) under penalty of paying a daily fine.

What important considerations should trademark owners keep in mind when seeking to protect their brands in Brazil?

Brazil is now part of the Madrid Protocol and due to the particulars of Brazilian procedure is advisable to have a local counsel to control the Brazilian designations filed via Madrid to avoid missing any deadline.

As a preparation for joining Madrid Protocol, BPTO has significantly reduced the backlog in the prosecution of trademark application. Therefore, currently a trademark is taking approx. 10-12 months for being examined (without oppositions). However, there is still some delays in certain measures as in the case of examination of appeals against the rejection of a trademark and Administrative Nullities against trademark registrations. Therefore, as mentioned above, it is advisable to start the trademark registration procedure in our country as early as possible to be fully prepared once the business actually starts.

Do you have any other helpful advice for companies regarding Brazil brand protection?

Brazilian authorities have been significantly more cooperative in combating counterfeiting in our country, especially in the largest business centers, such as the state of São Paulo. Therefore, it is advisable to hire experienced local lawyers to learn about existing initiatives and participate in them when appropriate. We have observed that companies that have a more present representation, providing support to the authorities when requested, have obtained a very expressive result with the withdrawal of counterfeit products from the market.

The support to be offered refers to the monitoring of the search and seizure measures carried out, assistance in the technical identification of counterfeit products, petitioning in criminal and administrative and criminal procedures, in addition to offering training to these authorities.

There are different criminal and civil measures to be taken considering the specific types of infringement and there is a National Directory to Combat Counterfeiting organized by the INPI in which a local firm can register its clients’ trademarks and related information on the respective assets, for the purpose of facilitating authorities’ contacts (customs, etc.) when they find suspicious products. This direct contact with the authorities and the creation of collaborative work ties are very important.

Editor’s note:  to learn more about protecting your company’s trademark rights in Brazil, contact Marcello do Nasciemento at marcello@dnlegal.com.br or via Linkedin: https://br.linkedin.com/in/marcello-do-nascimento-593a08