Concept:

Only the register granted by Federal Government (Governo Federal) can protect trademarks effectively in Brazil. The registration of your trademarks in other countries does not protect it in our country.
The registration of marks in Brazil is established by specific legislation: Law no. 9.279, of May 14, 1996 (Industrial Property Law) that regulates rights and obligations relating to Industrial Property.
To obtain a mark registration, it has to be filed an application at INPI, which will examine based on the provisions of the Industrial Property Law.

Trademark Presentation:

Nominative: It consists of one or more words, in the full meaning of the Roman alphabet.
Exemple:

5 to 9 SANTA CRUZ

Figurative: It consists of drawings, images, figures or any style of letter or number, used alone.
Exemple:

Mixed: It consists of a combination of nominative and figurative elements or nominative elements written in a particular style.
Exemple:

Three-Dimensional: It consists of the plastic form of a product or packing, whose form is distinctive in itself without the aid of any technical effects.
Exemple:

Term:

The registration of a trademark has a term of 10 years, as from the date of grant. This term can be renewable for successive and similar periods. If no request for renewal has been made, the registration will be extinct and the mark will be available.

Required Documents:

Power of Attorney – executed by legal representative of Applicant Company.
Declaration of Business Activity – made by legal representative of Applicant Company or from register of company’s authority attesting its trade name, domicile, detailed field of activities and date of incorporation.
A print of the mark, if any.
No legalization required.

International Classification Nice 09:

The trademark will be protected in the required class and it is necessary one application for each class, in accordance with the products and services described in the International Classification of Goods and Services.

Obligations of the trademark owner:

The owner is obligated to use the mark to keep its term. If the mark has not been used for any period of five (5) consecutive years after registration, it becomes vulnerable to a cancellation action. The owner will have to prove that the mark has been used.
The owner has to keep his information (name and address) updated before the INPI, for that, it has to be informed to Santa Cruz every time that changes are made.

Other obligation of the owner, is to renew the registration of the mark. An application for renewal must be made during the last year of the term of the registration. If the request for renewal has not been made by the end of the registration, the proprietor may make such request within the following six months on payment of an additional fee.

Procedures:

a) Previous Search (not compulsory requirement, but advisable);
b) Filling of application (own form, together with the documentation of the applicant). A preliminary formal examination will be carried out;
c) Publication of the application (Sixty days after examination, the application will be published in the Industrial Property Review for interested third parties to file oppositions);
d) Upon expiration of the opposition term, or, if an opposition has been filed, upon expiration of the reply term, the application will be subject to examination. The trademark examiner may issue office actions, which must be complied with or replied within 60 days;
e) In the end of the examination, the application will be admitted for registration or rejected;
f) If rejected, the applicant will have a chance to appeal;
g) If admitted for registration, the applicant has to pay the final fees for issuance of the registration certificate;
h) Grant (after payment of final fees and proof of payment, the grant will be published);
i) After registration granted, an administrative procedure for nullity or nullity proceedings can be instituted by INPI or by any person having a legitimate interest;
j) After 5 years from the grant, the mark is subject to forfeiture;
k) The administrative procedure of the mark will be accompanied every week in the RPI (Industrial Property Review) during all the term;
l) The trademark is valid for 10 years, after which it must be renewed. (An application for renewal must be made during the last year of the term of the registration);

Accompaniment:

Santa Cruz maintains an exclusive department to accompany trademarks prosecutions until the grant of the registration and during all its term. We also keep this accompaniment in the next 10 years, which are also accompanied by the clients through the publication copies (Industrial Property Review), when it occurs. We also deal with eventual oppositions, forfeiture, answers, replies, rejoinders, defenses, interposition of appeals, notifications and counter notifications in order to defend the trademark, registered or not. For that, we count with modern and current software and equipments, to obtain quick information in the INPI database.

Infringement of Marks:

TITLE V – INFRINGEMENT OF INDUSTRIAL PROPERTY

CHAPTER III - INFRINGEMENT OF MARKS

Article 189 - An infringement of a registered mark is committed by any person who:

I - reproduces, in whole or in part a registered mark, without the authorization of the owner, or imitates it in a manner that may cause confusion; or

II - alters the registered mark of another person already affixed to a product that has been placed on the market.

Penalty - imprisonment from 3 (three) months to 1 (one) year, or a fine.

Article 190 - An infringement of a registered mark is committed by any person who imports, exports, sells, offers or exhibits for sale, conceals or keeps in stock:

I- a product bearing a mark of another person which is unlawfully reproduced or imitated, in whole or in part; or

II - a product of his industry or commerce, held in a vessel, container or packaging bearing the legitimate mark of another person.

Penalty - imprisonment, from 1(one) to 3 (three) months, or a fine.

CHAPTER IV - INFRINGEMENTS COMMITTED BY MEANS OF MARKS, TITLES OF ESTABLISHMENTS AND ADVERTISING SIGNS

Article 191- Reproducing or imitating, in whole or in part, in a manner that may mislead or cause confusion, armorial bearings, crests or official public distinctions, whether national, foreign or international, without the required authorization, in a mark, title of establishment, commercial name, insignia or advertising sign, or using such reproductions or imitations for commercial purposes.

Penalty - imprisonment, from 1 (one) to 3 (three) months, or a fine.

Sole Paragraph - Any person who sells or exhibits or offers for sale products branded with such marks shall be liable to the same penalty.

CHAPTER VI - ACTS OF UNFAIR COMPETITION

Article 195 - An act of unfair competition is committed by any person who:

I - publishes, by any means, a false statement, detrimental to a competitor, aimed at obtaining an advantage;

II - provides or publishes false information with respect to a competitor with a view to obtaining an advantage;

III - uses fraudulent means to divert the customers of another party, for his own profit or another party’s profit;

IV - uses the advertising expression or sign of another person, or imitates it, in a manner liable to cause confusion between products or establishments;

V - makes undue use of another party commercial name, title of establishment or insignia or sells, exhibits, offers for sale or keeps in stock a product bearing these references;

VI - replaces on the product of another person the name or company name of such other person, without his consent, with his own name or company name;

VII - claims, as means of advertising to have received a prize or distinction that he has not actually been awarded;

VIII - sells or exhibits or offers for sale, in the container or packaging of another an adulterated or falsified product, or uses such container or packing to trade in a product of the same type, even if not adulterated or falsified, if such act does not constitute a more serious offense;

IX - gives or promises money or other consideration to an employee of a competitor in return for which such employee, failing his duties under his employment, procures him an advantage;

X - receives money or other consideration, or accepts a promise of payment or reward in return for procuring an advantage for a competitor, failing in his duties under his employment;

XI - discloses, exploits or uses, without previous consent, confidential knowledge, information or data which may be used in industry, commerce or service rendering, except where such confidential knowledge, information or data are in the public domain or are obvious to a person skilled in the art, to which he has had access due to a contractual or employment relationship, even after termination of the contract;

XII - discloses, exploits or uses, without previous consent, such knowledge or information referred to in the preceding item, obtained by illicit means or to which he has access by fraud;

XIII - sells, exhibits or offers for sale a product which he wrongly declares to be subject of a patent filed or granted or of a registered industrial design or who wrongfully states in a commercial announcement or paper that such product has been filed or patented, or registered;

XIV - divulges, exploits or uses without authorization, the results of tests or other undisclosed data the elaboration involves a considerable effort and which has been submitted to government entities as a condition for approving the marketing of products.

Penalty - imprisonment, from 3 (three) months to 1 (one) year, or a fine.

Paragraph 1 -The liability for the offenses referred to in items XI and XII of this Article shall also extend to the employer, partner or administrator of the enterprise.

Paragraph Second - The provisions of item XIV shall not apply to the disclosure of information by a government agency that is competent to authorize the marketing of a product, where necessary to protect the public.