Getting the Deal Through - Trademarks 2015

8/10/2019 Getting the Deal Through - Trademarks 2015

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TrademarksIn 54 jurisdictions worldwide

Contributing editor Michelle Mancino Marsh

2015


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Trademarks 2015Contributing editor

Michelle Mancino MarshKenyon & Kenyon LLP

PublisherGideon [email protected]

SubscriptionsSophie [email protected]

Business development managersGeorge [email protected]

Alan [email protected]

Dan [email protected]

Published byLaw Business Research Ltd87 Lancaster RoadLondon, W11 1Q , UKTel: +44 20 7908 1188Fax: +44 20 7229 6910

Law Business Research Ltd 2014No photocopying: copyright licences do not apply.First published 2005Eleventh editionISSN 1745-4638

The information provided in this publication isgeneral and may not apply in a specic situation.Legal advice should always be sought before takingany legal action based on the information provided.This information is not intended to create, nor doesreceipt of it constitute, a lawyerclient relationship.The publishers and authors accept no responsibilityfor any acts or omissions contained herein.Although the information provided is accurate as ofSeptember 2014, be advised that this is a developingarea.

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CONTENTS

2 Getting the Deal Through Trademarks 2015

Overview 7Michelle Mancino MarshKenyon & Kenyon LLP

The Community Trademark 8Mara MondolfoSociet Italiana Brevetti (SIB)

Angola 12Patrcia RodriguesRaul Csar Ferreira (Herd) SA

Argentina 16Mariano Municoy and Diana Vera CasparyMoeller IP Advisors

Australia 22Marie Wong Wrays

Austria 30Peter Israiloff Barger, Piso & Partner

Bosnia and Herzegovina 35Tamara BubaloKaranovic & Nikolic Law Office

Brazil 40Philippe Bhering and Mina KawayBhering Advogados

Cambodia 47

Nguyen Hoa Binh and Do Phuong LanDaitin & Associates Co, Ltd

Canada 52Paula ClancyClancy PC + Brion Raffoul

Cape Verde 59Patrcia RodriguesRaul Csar Ferreira (Herd) SA

China 63

Jay ShaLiu, Shen & Associates

Colombia 71Juan Guillermo Moure, Juan Felipe Acosta and Mara Clara CaldernOlarteMoure

Croatia 76Tamara BubaloKaranovic & Nikolic Law Office

Denmark 81Johnny Petersen

Delacour

Ecuador 87Mara Rosa Fabara VeraFabara & Compaa Abogados

El Salvador 93Jos Roberto RomeroRomero Pineda & Asociados

Germany 99Claus M Eckhartt and Christine FluhmeBardehle Pagenberg Partnerschaft

Greece 105Alkisti-Irene Malamis and Lina GalanopoulouMalamis & Associates

Guatemala 112Marco Antonio Palacios and Hilda MonterrosoPalacios & Asociados

Honduras 117Ricardo Anibal Mejia MBufete Mejia & Asociados

India 123Swati Sharma and Sar AnandAnand and Anand

Italy 129Fabrizio de Benedetti and Pier Luigi RoncagliaSociet Italiana Brevetti (SIB) / Studio Legale SIB

Japan 134Yasufumi Shiroyama and Ai NagaokaAnderson Mri & Tomotsune

Kenya 139

John Syekei and David OpijahCoulson Harney

Korea 143Mi-Cheong Lee, So-Jung Bae and Michael M McDanielLee International IP & Law Group

Kosovo 149Tamara BubaloKaranovic & Nikolic Law Office

Kyrgyzstan 153

Omurgul Balpanova and Aisulu ChubarovaARTE Law Firm

Laos 157Nguyen Hoa Binh and Do Phuong LanDaitin & Associates Co, Ltd

Macao 161Patrcia RodriguesRaul Csar Ferreira (Herd) SA

Macedonia 166Tamara Bubalo

Karanovic & Nikolic Law Office

Malaysia 171Benjamin J Thompson, Haneeta Kaur Gill and Hannah AriffinThompson Associates


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CONTENTS

Mexico 177Marcela BollandUhthoff, Gomez Vega & Uhthoff SC

Montenegro 182Tamara BubaloKaranovic & Nikolic Law Office

Mozambique 187Patrcia RodriguesRaul Csar Ferreira (Herd) SA

Myanmar 191Nguyen Hoa Binh and Do Phuong LanDaitin & Associates Co, Ltd

Nigeria 195Tolushuwa OyebokunBloomeld Advocates & Solicitors

Pakistan 201Ali Kabir ShahAli & Associates

Peru 207Mara del Carmen Arana CourrejollesEstudio Colmenares & Asociados

Philippines 213Mila FederisFederis & Associates Law Offices

Poland 219

Dorota Rzazewska and Marta Krzyskw-SzymkowiczJWP Patent & Trademark Attorneys

Portugal 225Patrcia RodriguesRaul Csar Ferreira (Herd) SA

Russia 229Alexander Yurchik and Yuriy KorchuganovMGAP Attorneys at Law

St Lucia 234

Cheryl Charmaine Goddard-DorvilleFloissac Fleming & Associates

So Tom & Prncipe 239Patrcia RodriguesRaul Csar Ferreira (Herd) SA

Serbia 242Tamara BubaloKaranovic & Nikolic Law Office

Singapore 247

Kevin Wong and Denise Loh Ella Cheong LLC

Slovenia 251Nina DrnovekLaw Office Drnovek LLC

South Africa 256Debbie Marriott, Eugene Honey and Tiffany ConleyAdams & Adams

Switzerland 261Brendan Bolli and Sandra PrzewlokaE Blum & Co AG

Taiwan 266Fali Lin and Michael ZuckFormosa Transnational, Attorneys at Law

Turkey 272Ik zdoan and Ezgi BaklacMorolu Arseven Law Firm

United Kingdom 278Sarah Hadland, Holly Strube and Chloe FernandezBoyes Turner

United States 284Michelle Mancino MarshKenyon & Kenyon LLP

Venezuela 291Mara NebredaHoet Pelez Castillo & Duque

Vietnam 296

Nguyen Hoa Binh and Do Phuong LanDaitin & Associates Co, Ltd


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BRAZIL Bhering Advogados


BrazilPhilippe Bhering and Mina KawayBhering Advogados

1 Ownership of marks

Who may apply?

The Brazilian Law on Industrial Property (Law No. 9,279 of 14 May 1996)(BIPL) states that natural or legal persons who are subject either to publiclaw or private law may apply for the registration of a mark.

Business entities subject to private law may only apply for the registra-tion of a mark covering activities that such persons effectively and lawfullyexercise either directly or through companies they directly or indirectlycontrol. The products or services covered in the ling petition must fallwithin the scope of such activities.

Likewise, natural persons may only apply for registration of a markcovering their professional activities.

2 Scope of trademark

What may and may not be protected and registered as atrademark?

The BIPL establishes that any distinctive, visually perceptible sign may beregistered as a trademark, provided it does not fall within the prohibitionsarising under Brazilian law.

The requisite of a visual representation excludes from the scope ofprotection non-traditional trademarks, such as olfactory, sound and gusta-tory marks. On the other hand, the protection of three-dimensional signs which are considered non-traditional trademarks has been admitted inBrazil since the enactment of the current Industrial Property Law in 1997.

The BIPL sets out, in article 124, a list of examples of signs that are notregistrable as trademarks. The list includes: signs of a generic, necessary, common, usual or merely descriptive

character, when related to the product or service to be distinguished,or those commonly used to designate a characteristic of the productor service with respect to its nature, nationality, weight, value, qual-ity and moment of production of a product or provision of a service,except when the sign is presented in a sufficiently distinctive manner;

signs or expressions used only as a means of advertising; colours and their names, except when arranged or combined in an

unusual and distinctive manner; and names, prizes or symbols of sporting, artistic, cultural, social, political,

economic or technical official or officially recognised events, as wellas imitations likely to cause confusion, save when authorised by thecompetent authority or entity promoting the event.

3 Common law trademarks

Can trademark rights be established without registration?

The BIPL states that the ownership of a mark is acquired by means of a val-idly granted registration, following which the titleholder has an establishedright to exclusive use of the trademark throughout the national territory.

However, the BIPL also provides protection for the owners of trade-marks that have not yet been registered with the Brazilian Patent and

Trademark Office (BPTO).An example is the right of prior use, which establishes that any personwho, in good faith, at the date of priority or the ling date of the applica-tion, has been using an identical or similar mark for at least six months in

the country, to distinguish or certify a product or service that is identical,similar or akin, is entitled to a preferential right to registration.

Another example is trademarks that are well-known in their eld ofactivity, as per article 6-bis (1) of the Paris Convention. Well-known trade-marks are given special protection, independently of whether they havebeen previously led or registered in Brazil. The BPTO has powers to rejectex officio a trademark application that wholly or partially reproduces orimitates a well-known trademark. On the other hand, in the event of theowner of a well-known trademark ling an opposition or an administra-tive nullity action based on its well-known trademark, it has a period of 60days commencing with the ling of the opposition or administrative nullityaction in which to le an application for the registration in Brazil of its well-known mark.

The BIPL also establishes that signs that imitate or reproduce, whollyor in part, a third-party mark of which the applicant could not be unawaredue to the commercial activity in which he engages, are not registrable astrademarks, if the sign is intended to distinguish a product or service that isidentical, similar or akin to that covered by the existing mark and is likelyto cause confusion or association with such third-party mark. As a conse-quence, the BIPL enables the owner of a trademark that has not yet beenled or registered in Brazil to challenge third parties who attempt to reg-

ister similar or identical trademarks. Similarly to the situation mentionedin the above paragraph, the owner of the trademark has a 60-day term inwhich to le an application for registration of his or her mark in Brazil, withsaid period commencing upon the date he or she led the opposition oradministrative nullity action.

4 Registration time frame and cost

How long does it typically take, and how much does ittypically cost, to obtain a trademark registration? Whatcircumstances would increase the estimated time and cost ofling a trademark application and receiving a registration?What additional documentation is needed to le a trademarkapplication?

Two-and-a-half years is the estimated time frame from the initial trade-mark ling until grant of registration, in the case of smooth prosecution(free of obstacles such as official actions, opposition and rejection).

Attorney fees for the preparation and ling of each application perclass (multi-class applications are not allowed in Brazil) are typicallyUS$500 and the official fees are US$200. In the event of smooth prosecu-tion (free of obstacles), the nal fees for registration are payable withinapproximately two and a half years from the date of ling. Attorney fees forregistration are approximately US$600 and official fees are US$370. Thedollar equivalent of official fees (which are xed in local currency) uctu-ates in line with exchange rate variations. Having said that, the total basiccost in an obstacle-free prosecution from the trademark ling until regis-tration is approximately US$1,670.

The following circumstances may cause deviations from the averagetime for nal registration and therefore increase the estimated time and

cost of a trademark prosecution: opposition led by third parties; official actions by the BPTO in which an applicant is required to pre-

sent clarication or supplementary documentation; rejection of the trademark application; and

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Bhering Advogados BRAZIL


a stay of application pending a decision on a prior application by a thirdparty.

The attorney fees involved with the above-mentioned circumstances arecharged separately from the ling fees and can range from US$800 to con-test an opposition presented by a third party; US$300 to comply or contestan official action; US$900 to appeal from a rejection decision; and US$250to follow up third parties cases.

The required documents for the purpose of ling trademark applica-tions are: Power of attorney duly executed and signed by the authorised officer

of the applicant (no notarisation or legalisation is required), includinga clear print of the name and title of the signor below the signature. Asimple signed copy sent via e-mail or fax to the applicants attorneyin Brazil is acceptable to the Patent and Trademark Office (PTO).Moreover, the power of attorney can be submitted to the PTO if not atthe ling within a 60-day term from the ling date in Brazil through asupplementary petition and additional late ling costs.

In the case of a priority claim, a certied copy of the PriorityApplication, comprising all of the goods and/or services to be led inBrazil. The priority documents can be submitted to the PTO if notat the ling within a four-month period from the ling date in Brazilthrough a supplementary petition and additional late ling costs.

In the case of composite or device marks, a clear sample of the mark(usually a high denition le in .jpeg format) and information regard-ing any colour claim is also required.

5 Classi ication system

What classication system is followed, and how does thissystem differ from the International Classication System asto the goods and services that can be claimed? Are multi-classapplications available and what are the estimated cost savings?

Brazil began to apply the International Classication of Goods and Servicesin 2000. At that time, the seventh edition of the Nice Classication cameinto force in Brazil pursuant to Normative Act No. 150 of 9 September1999. The tenth edition of the Nice Classication has been in force in Brazil

since 1 January 2012.Given that until 2000 Brazil adopted a national classication sys-tem, trademark applications led prior to that year had to be reclassiedin accordance with the international classication as and when renewalswere sought.

On 6 January 2006, the BPTO issued Resolution No. 123/06, whichsuspended the force and applicability of the International ClassicationSystem to trademark applications led up until 31 December 1999, as wellas to trademark registrations granted up until 31 December 1999, andwhich had been classied in accordance with the former Brazilian classi-cation system.

As a consequence, applications or registrations led or granted upuntil 31 December 1999 were deemed to have been granted or renewed inaccordance with the former Brazilian classication system. The Resolutionis still in force, and for this reason there are still registrations in Brazil clas-

sied under the national classication system.As mentioned in question 4 above, multi-class applications are notallowed in Brazil.

6 Examination procedure

What procedure does the trademark office follow whendetermining whether to grant a registration? Are applicationsexamined for potential conicts with other trademarks? Mayapplicants respond to rejections by the trademark office?

As per the BIPL, once the application has been led it will be publishedin the Official Gazette in order to give any interested parties an opportu-nity to present an opposition, within a period of 60 days. If an oppositionis led, the applicant will be notied to respond within 60 days. After the

terms for opposition and counter-arguments have expired, the examina-tion will be conducted. Potential conicts with senior trademarks will thenbe considered.

During the period of examination, official actions or requests maybe issued and must be responded to within a period of 60 days. If an

applicant fails to respond to an official requirement, the application will bedenitively shelved. If, however, a response is led, the examination willcontinue, even if the requirement has not in fact been satised or if theapplicants response was to lodge a formal challenge to the official actionor request.

In the absence of opposition, the examiner will consider the resultsof the availability search. If potential conicts with prior registrations areveried, then the examiner will, ex officio, reject the application. If a pos-sible conicting registration, which might be cited as grounds for rejection,is under forfeiture or subject to court proceedings or orders, then the exam-iner will stay the junior application in abeyance pending a nal decision inthe respective case. The same applies to possible conicting senior applica-tions that are still under examination.

Once the examination has been concluded, a decision will be issued,either allowing or rejecting the application for registration. In the event ofrejection, the applicant has 60 days within which to le an appeal to thepresident of the BPTO.

7 Use of a trademark and registration

Does use of a trademark or service mark have to be claimedbefore registration is granted or issued? Does proof of use haveto be submitted? Are foreign registrations granted any rights ofpriority? If registration is granted without use, is there a time bywhich use must begin either to maintain the registration or todefeat a third-party challenge on grounds of non-use?

When applying for registration in Brazil there is no need to claim prior useor to submit proof of use of the trademark.

Priority rights are guaranteed for an application for the registrationof a mark, when an application has been led in a country which has anagreement with Brazil, or led before an international organisation ofwhich Brazil is a member. The application in Brazil must be led within thetime limits established in the agreement, without the occurrence duringsaid time limits of any fact that invalidates or prejudices the application.

The registrant must initiate the use of its trademark within ve yearsfrom grant. Failing to do so may result, upon the request of any person witha legitimate interest, in the declaration of forfeiture and consequent can-cellation of the registration. Likewise, if use of the mark has been inter-rupted for more than ve consecutive years or if, within that time, the markhas been used in a modied form that implies alteration of its originaldistinctive character as found on the certicate of registration, the regis-tration may, upon third-party request, be deemed forfeited and cancelled.

The use of the mark must include all the products or services men-tioned on the certicate, under penalty of partial forfeiture of the registra-tion with respect to those products or services not similar or akin to thosefor which use of the mark has been proved.

Forfeiture requests will not be admitted if use of the mark has beenproved (or if its lack of use has been justied) in earlier proceedings in thepast ve years.

8 Appealing a denied application

Is there an appeal process if the application is denied?

The applicant may le an appeal against a rejection within 60 days. Thirdparties with a legitimate interest may challenge the appeal within 60 daysof the date of publication of notice of appeal.

In the event of the BPTO allowing an application, but subject to limi-tations or reservations (eg, without the right of exclusive use of a certainword element), the applicant may le an appeal against the limitation.

The appeal and any challenges to it are analysed by the president of theBPTO. A decision to uphold the rejection ends proceedings in the admin-istrative sphere. Thereafter, it is possible for the applicant to le a judicialnullity action against the administrative act which upheld the rejection ofthe application.

In the event of the rejection being overturned on appeal, the allow-ance of the application will be automatically published, with the start ofthe period of time within which the applicant is to pay the nal fees forregistration.



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9 Third-party opposition

Are applications published for opposition? May a third partyoppose an application prior to registration, or seek cancellationof a trademark or service mark after registration? What are theprimary bases of such challenges, and what are the procedures?May a brand owner oppose a bad-faith application for itsmark in a jurisdiction in which it does not have protection?What is the typical range of costs associated with a third-partyopposition or cancellation proceeding?

As mentioned in question 6, once an application is led, it will be publishedin the Official Gazette for opposition purposes. Any interested party willhave a 60-day term, counted from the date of the publication, to submitan opposition to the application. After the opposition is led, the applicantis notied to submit a reply within 60 days. Once the opposition and replyterms have expired, the examination of the application is conducted. TheBIPL establishes a pre-registration opposition system. As a consequence,oppositions may be led only against trademark applications. In thisregard, please see question 6.

Once the registration is granted and published in the Official Gazette,a 180-day term commences in which any person with a legitimate interestmay le an administrative nullity action. It is important to highlight thatthe administrative nullity action may be also commenced ex officio by theBPTO. The registrant will be notied to respond within a period of 60 days.After the term for counter-arguments has expired and even if no responsehas been presented, the issue will be decided by the president of the BPTO.This decision brings the administrative stage to a close.

A registration is subject to a declaration of administrative nullity if theregistration was granted in conict with the provisions of the BIPL. To besuccessful in an administrative nullity action a third party must demon-strate, inter alia: a lack of compliance with one of the legal formalities of the BPTO,

essential for the proper processing of the application; that the trademark registration infringes one of the provisions of

article 124 (signs not registrable as marks) of the BIPL; that the sign does not meet the essential requirements to characterise

it as a trademark; or that the registrants commercial or professional activities are

not consistent with the products or services claimed in the lingpetition.

A brand owner who does not have yet trademark protection in Brazil canoppose a bad-faith application for its mark based on the provisions ofarticle 124, XXIII of the BIPL. Said provision specically establishes thatsigns that imitate or reproduce, wholly or in part, a third-party mark, ofwhich the applicant could not be unaware due to the commercial activity inwhich he engages, are not registrable as trademarks, if the sign is intendedto distinguish a product or service that is identical, similar or akin to thatcovered by the existing mark and is likely to cause confusion or associa-tion with such third-party mark.

Furthermore, in the event the bad-faith application matures into reg-istration, the brand owner will have the possibility to le an administrative

nullity action against the bad-faith registration based on the same provi-sion. At this stage, it is also possible to le a judicial nullity action againstthe decision of the Brazilian PTO in order to have the grant decisionreviewed by a federal court.

Any person with a legitimate interest, or the BPTO itself, may le a judicial nullity action against the trademark registration. The registrant orthe BPTO itself may also le a judicial nullity action again the administra-tive act that annulled a trademark registration. A declaration of nullity willtake retroactive effect as from the date the trademark application was ledat the BPTO. A judicial nullity action is statute barred following the expiryof ve years from the date of publication of the granting decision.

Of note is that in Brazil nullity actions are statute barred following theexpiry of ve years from the date of publication of the granting decision.Notwithstanding, under the Paris Convention, the ve-year rule does notapply for judicial nullity actions based on bad faith. Therefore, an action

based on this particular argument is imprescriptible.Attorney fees for the preparation and ling of an opposition or a

reply to an opposition are typically US$500/800 and the official fees areUS$177.50 and US$70, respectively. On the other hand, the attorney feesfor preparing and ling an administrative nullity action or a reply to an

administrative nullity action are typically US$800/1,000 and the officialfees are US$295 and US$70, respectively. The dollar equivalent of officialfees (which are xed in local currency) uctuates in line with exchange ratevariations.

10 Duration and maintenance of registration

How long does a registration remain in effect and what isrequired to maintain a registration? Is use of the trademarkrequired for its maintenance? If so, what proof of use isrequired?

The trademark registration remains in effect for 10 years commencing withthe date of its grant, and may be renewed for equal and successive periods.The renewal request must be led during the last year of the term of theregistration and must be accompanied by proof of payment of the respec-tive fee. If a renewal request has not been made by the end of the registra-tion term, the registrant may make such request within the following sixmonths on payment of an additional fee.

According to the BIPL, it is not necessary to submit proof of use of thetrademark when applying for registration or when requesting its renewal.The use of the mark needs to be proved only in the event of a forfeiturerequest being led by a third party with a legitimate interest.

As mentioned in question 7, a registrant must initiate the use of itstrademark within ve years from its grant or the registration may becomeforfeit and therefore extinct. In the event of the use of the mark being inter-rupted for more than ve consecutive years or if, within that time, the markhas been used in a modied form that implies alteration to its original dis-tinctive character, as per the certicate of registration, the registration mayalso become forfeit and extinct.

If a forfeiture request is led, the registrant will be notied to replywithin a period of 60 days, the onus being on him to prove the use of themark or to justify lack of use for legitimate reasons. An appeal may belodged against the decision that either declares or rejects forfeiture of theregistration. Forfeiture requests will not be admitted if use of the mark hasbeen proved (or if its lack of use has been justied) in earlier proceedingsin the last ve years.

The BIPL does not set out specic provisions regarding proof of use.When analysing the effective use of trademarks, the BPTO will take intoconsideration all means of proof admitted by law, such as commercialinvoices referring to the registered trademark and its owner, advertisingmaterials and catalogues and documents that prove the import or thenationalisation of the products in Brazil in the case of products that aremanufactured abroad.

11 The bene its of registration

What are the benets of registration?

The following benets are guaranteed to the registrant: exclusive use of the trademark on Brazilian territory; the right to use legal means to prevent third parties from using identi-

cal or similar trademarks to identify identical or similar products orservices;

the right to cancel registration of identical or similar trademarksidentifying identical or similar products or services; and the right to dispose of the trademark, by assigning its registration or

licensing its use.

12 Licences

May a licence be recorded against a mark in the jurisdiction?Are there any benets to doing so or detriments to not doing so?

The BIPL allows the owner or the applicant of a trademark registration toenter into licence agreements for the use of the mark without prejudice totheir right to exercise effective control over the specications, nature orquality of the respective products or services.

A licence agreement takes effect between the contracting parties fromthe moment it is executed. However, it must be recorded with the BPTOin order to be enforceable against third parties. It will produce effects inrelation to third parties as from the date of its publication in the OfficialGazette.

Registration of the licence agreement with the BPTO is also importantif royalties are agreed, in that it is only after such registration that royalties



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can be remitted abroad and the licence fees become tax-deductible. Theremittance of payments from trademark licences will be accepted onlyafter grant of a respective trademark registration by the BPTO. Retroactivepayments before the grant of the trademark registration are not allowed.

Registration with the BPTO is not necessary in order to constituteproof of use.

13 Assignment

What can be assigned?Applications and registrations may be assigned on condition that the legalrequirements for requesting registration are met by the assignee.

The assignment of a trademark application or registration covers thetrademark alone and it is not necessary. The goodwill and other businessassets need not to be assigned in order for assignment of the trademark tobe valid.

The assignment must cover all existing registrations and/or applica-tions in the name of the assignor in relation to identical or similar trade-marks that identify identical or similar products or services, failing whichthe registrations or applications not assigned may be cancelled or deemedabandoned.

14 Assignment documentation

What documents are required for assignment and what formmust they take?

The documents necessary to record a trademark assignment are thefollowing: power of attorney to be executed and signed by an authorised officer

of the assignee. There is no need to notarise or legalise this document;and

assignment document to be executed and signed by the authorisedofficers of the assignor and assignee, with all the signatures beingnotarised before a notary public. The notary should attest that thesignatories have the necessary powers to represent the parties in thisact. This document must also include the signature and details of theidentity of two witnesses (no notarisation is required for the witnessessignatures).

15 Validity of assignment

Must the assignment be recorded for purposes of its validity?

The assignment of a trademark application or registration takes effectbetween the contracting parties from the moment it is executed and signedby the assignor and assignee.

However, to produce effects vis--vis third parties the assignmentmust be recorded at the BPTO. The assignment will produce effects withrespect to third parties as from the date of its publication in the OfficialGazette.

16 Security interests

Are security interests recognised and what form must theytake? Must the security interest be recorded for purposes of itsvalidity or enforceability?

Security interests are governed by the Brazilian Civil Code (Law No. 10,406of 10 January 2002). Of the security interests for which the Brazilian CivilCode makes provision the one which applies to trademarks is the lien orpledge. The security interest must be recorded at the BPTO in order to pro-duce effects in relation to third parties. The security interest will produceeffects with respect to third parties as from the date of its publication in theOfficial Gazette.

Pledge agreements which contain references to: the amount of thecredit, or its estimated value or maximum amount; the time frame for pay-ment of the debt; and the trademarks specications are usually acceptedfor registration by the BPTO. The limitation or onus on the application or

registration is then published in the Official Gazette by the BPTO.

17 Markings

What words or symbols can be used to indicate trademark useor registration? Is marking mandatory? What are the benets ofusing and the risks of not using such words or symbols?

The symbol can be used in Brazil to indicate that the trademark is regis-tered with the BPTO.

The BIPL does not mention the use of marking in any of its provisions.Therefore, it can be assumed that in Brazil marking is not mandatory.

The benet of using the symbol is that it reinforces the fact that thesign in question is registered as a trademark and that, consequently, thirdparties cannot make use of it without express permission from the owner.

Dishonestly claiming for advertising purposes that a product or ser-vice has received a prize or distinction is deemed to be a crime of unfaircompetition under the BIPL.

18 Trademark enforcement proceedings

What types of legal or administrative proceedings are availableto enforce the rights of a trademark owner against an allegedinfringer or dilutive use of a mark, apart from previouslydiscussed opposition and cancellation actions? Are therespecialised courts or other tribunals? Is there any provision

in the criminal law regarding trademark infringement or anequivalent offence?

In addition to the administrative proceedings of opposition and cancella-tion, the trademark owner can enforce its rights through criminal and civilproceedings, as provided for in the BIPL, in articles 189 and 190 (crimesagainst marks) and in articles 207 to 210 (civil measures).

Civil proceedings include, for example, applications for injunctionsrequiring the immediate cessation of the infringement act (plaintiff mayrequest the imposition of a daily penalty for failure to comply with aninjunction or other preliminary relief) and claims for damages. It is impor-tant to note that the judge may grant ex parte injunctions so as to avoidirreparable loss or harm that would be difficult to repair. The court may,in such circumstances, require the petitioner to post a judgment bond ora duciary guarantee. In cases of blatant reproduction or imitation of a

registered mark, the judge may order the seizure of all the merchandise,products, objects, packages, labels and other materials that bear the falsi-ed or imitated mark.

A criminal action requires the ling of a criminal complaint, save in thecase of the crime against armorial bearings, crests or official public distinc-tions, be they national, foreign or international, in which case the criminalaction will be public (ie, commenced by the public prosecution service). Inaddition to preliminary criminal search and seizure measures, the trade-mark owner may request: seizure of a falsied, altered or imitated markat its place of preparation or wherever it is to be found, prior to its unlaw-ful use; or destruction of a counterfeit mark on packets or products thatcontain it, before they are distributed, even in circumstances in which thepackages or products themselves appear to have been discarded.

Border enforcement mechanisms are regulated by articles 605 to 608of Federal Decree No. 6759 of 5 February 2009. The customs authority

may, on its own initiative or at the request of an interested party, seize,during the course of a customs inspection, any products carrying falsied,altered or imitated marks or a false indication of source. Following seizure,the customs authority is under a duty to notify the trademark owner so thathe may, within a period of 10 working days, le the respective complaintand request for judicial seizure.

Moreover, in the event of a trademark owner having sufficient evi-dence of planned import or export of counterfeit goods, it may requestthat the customs authority seize the goods. The trademark owner will berequired to set out the facts or circumstances that justify its suspicion. Thecustoms authority may require the trademark owner to provide a bond inan amount sufficient to cover any loss that may be caused to the defend-ant in the event of the seizure proving to be unfounded, and as a meansof seeking to ensure that the trademark owners request is not an abuseof right.

Nullity actions against trademark registration and nullity actionsagainst administrative acts that uphold a rejection decision, or which atrademark registration, are submitted to the Federal Justice of Rio deJaneiro. The BPTO is automatically a party in all such court proceedings.Whenever a government agency is party to a lawsuit, the proceedings must



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be listed before a federal court. The BPTO head office is in Rio de Janeiroand therefore proceedings to which it is a party must commence in thefederal court district of that city.

The entry level (rst instance) of the Federal Court of Rio de Janeirohas four courts specialising in intellectual property. At the appeal level, theRegional Federal Court of the Second Region, with jurisdiction over thestates of Rio de Janeiro and Espirito Santo, has two specialist panels forintellectual property.

Infringement actions must be led before state courts, as the BPTOdoes not participate in such proceedings. There are no specialist statecourts handling trademark infringement cases.

19 Procedural format and timing

What is the format of the infringement proceeding?

Discovery, in the form that exists in common law systems as a pretrialphase in a lawsuit, is not provided for in the Brazilian legal system.

According to the Brazilian Code of Civil Procedure, the parties canresort to the following mechanisms (inter alia) to obtain evidence for legalproceedings: personal deposition; exhibition of documents or other mate-rial; witness testimony; expert evidence and court inspection.

In addition, the Code of Civil Procedure also permits the ling of arequest for early production of evidence. This measure allows one party

to request the live testimony of the opposing party or witnesses or theundertaking of an expert examination, when there are reasonable groundsfor fearing that the evidence may be lost or for some other urgent reason.The application for early production of evidence may be led prior to thecommencement of the substantive proceedings. Such an application mayalso be made following commencement of proceedings in these circum-stances the party seeking the direction must demonstrate that it could notreasonably be expected to wait until the time at which the evidence wouldnormally be adduced in the proceedings.

Once a civil trademark infringement action is led, the defendant isnotied to present his or her response within 15 days. The plaintiff mayrespond to the defendants answer within 10 days. There are usually twohearings at rst instance: a conciliatory or preliminary hearing, in whichthe parties try to settle the case amicably; and an evidentiary hearing,in which the expert and the parties technical assistants may be cross-

examined as to their ndings, in the event of a dispute between them (therelevant questions having been led and responded to in writing prior tothe hearing the scope of the cross-examination being issues which remainin dispute); depositions are taken from the parties and the witnesses listedare heard. It is important to note that this second hearing occurs only incases where there is a need for evidence to be produced.

A nal decision on a civil infringement action may take between oneand two years at rst instance. This time frame will vary in accordance withthe state and court in which the lawsuit is led.

20 Burden of proof

What is the burden of proof to establish infringement ordilution?

The burden of proof system is ruled by the Civil Procedure Code, whichapportions the burden of proof equally between the disputing parties.The plaintiff bears the burden of proving the facts it claims support its

right. The defendant has the burden of proving facts that impede, modifyor terminate the plaintiffs right. If the defendant merely denies the facton which the plaintiffs plea is based, the burden of proof remains on theplaintiff.

In general, in infringement actions, the plaintiff has to prove theoffence against its trademark rights and the defendant has to demonstratethat no offence was committed.

As of 2003, the Superior Court of Justice has consolidated the view thatproof of the violation of a trademark right is sufficient in itself to give riseto a right to damages independently of any evidence of harm caused to theinjured party.

In relation to the quantum of damages, the BIPL applies a triple criteria

calculation, as follows: the benets that would have been gained by the injured party if theviolation had not occurred;

the benets gained by the author of the violation of the rights; or

the remuneration that the author of the violation would have paidto the proprietor of the violated rights for a licence that would havelegally permitted him to make use of the protected rights.

21 Standing

Who may seek a remedy for an alleged trademark violation andunder what conditions? Who has standing to bring a criminalcomplaint?

The trademark owner is entitled to have recourse to the courts in the eventof trademark infringement. Licensees and distributors may also le suitin response to an alleged trademark violation, provided they have beeninvested by the trademark owner with full powers to act in defence of themark.

The same conditions apply to criminal complaints.

22 Foreign activities

Can activities that take place outside the country of registrationsupport a charge of infringement or dilution?

Activities that take place outside the country, without producing directeffects in the country, may be cited in an infringement action as additionalarguments.

When said activities have a direct effect in Brazil, they may serve as thebasis for an infringement action. In this regard, the BIPL establishes, forexample, that it is a crime, carrying a penalty of imprisonment for a periodof one to three years, or a ne, to import: products branded with the illic-itly, wholly or partially, reproduced or imitated mark of a third party; orof a product from the infringers industry or commerce, held in a vessel,container or package bearing the legitimate mark of a third party. Borderenforcement mechanisms are also an example. See question 18.

23 Discovery

What discovery/disclosure devices are permitted for obtainingevidence from an adverse party, from third parties, or fromparties outside the country?

As mentioned in question 19, the discovery procedure, as conceived incommon law systems as a pretrial phase in a lawsuit, is not applicable inBrazil.

To obtain evidence in legal proceedings, the parties can request direc-tions, inter alia, for the following: personal deposition by a party; exhibi-tion of documents or other material; witness testimony; expert evidence,documentary evidence and court inspection.

In addition, as stated in question 19, the Code of Civil Procedure alsopermits an application for early production of evidence.

24 Timing

What is the typical time frame for an infringement or dilution,or related action, at the preliminary injunction and trial levels,and on appeal?

A nal decision on a civil infringement action may take between one andtwo years at rst instance. A nal decision on second instance may take upto two years. These time frames will vary according to the complexity ofthe case and the state and court in which the lawsuit is led. Preliminaryinjunctions may be granted immediately, provided the legal requirementsare met.

25 Litigation costs

What is the typical range of costs associated with aninfringement or dilution action, including trial preparation,trial and appeal?

The attorneys fees associated with a civil trademark infringement action

may vary according to the complexity of each case and according to theprofessional rates charged by the assigned counsel.Court fees are xed proportionally to the amount in issue estimated

by the plaintiff.



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Usually, the legal fees for ling an infringement action, for ling anappeal against the nal decision at rst instance and for ling an appeal tothe Superior Court of Justice against a nal decision at second instance arecharged on a xed-fee basis.

Some attorneys, however, charge for such proceedings and for trialpreparation and advocacy on an hourly rate rather than a xed-fee basis.

Additionally, many attorneys charge a success fee, which may also bepayable if the disputing parties reach a settlement.

26 Appeals

What avenues of appeal are available?

The Brazilian Civil Procedure Code sets out various avenues of appeal, towhich parties in trademark infringement proceedings may resort. Thereare both appeals on the merits (substantive issue) of a case and appeals

on procedural grounds or relating to questions other than the substantiveissue.The possible forms of appeal include motions based on conicting

case law, motions for clarication of the ruling and appeals based on inter-nal court rules.

The nal decision of the rst instance court, for example, may be chal-lenged on appeal before the State Court of Appeal by means of anapelao.From the Appeal Court, a further appeal is possible on issues pertaining tofederal law, to the Superior Court of Justice or, in the event of a constitu-tional issue arising, to the Federal Supreme Court.

27 Defences

What defences are available to a charge of infringement ordilution, or any related action?

In a civil infringement action, the defendant in its reply may assert factsthat impede, modify or terminate plaintiffs right or simply present a gen-eral denial. In addition to its reply, the defendant may also le a counter-claim against the plaintiff, if the legal prerequisites are duly met.

One commonly used argument asserted by defendants is that there isa lack of confusing similarity between the confronting signs.

The right of prior use mentioned in question 3 may also be asserted inthe defendants reply.

In relation to criminal actions, an allegation of nullity of the registra-tion on which the action is based may be relied upon as a defence. Acquittalof the defendant, however, will not automatically lead to nullity of the reg-istration, which can only be requested in an action before the competentcourts.

28 Remedies

What remedies are available to a successful party in an actionfor infringement or dilution, etc? What criminal remediesexist?

As per question 18, the civil remedies include: an order for the immediatecessation of the infringing act (the plaintiff may request the imposition ofa daily penalty for failure to comply with a preliminary injunction or with arst instance decision) and compensation for the unauthorised use of thetrademark.

In a lawsuit led seeking cessation of the infringing act and an awardof damages, the judge may grant an ex parte preliminary injunction inorder to avoid irreparable loss or harm that would be difficult to repair. Thecourt may, in such circumstances, require a petitioner to post a bond or aduciary guarantee. In addition, in cases of blatant reproduction or imita-

tion of a registered mark, the judge may order the seizure of all the mer-chandise, products, objects, packages, labels and other materials that bearthe counterfeit or imitated mark.

As for the quantum of damages, the BIPL applies a triple criteria calcu-lation, as follows: the benets that would have been gained by the injuredparty if the violation had not occurred; the benets gained by the author ofthe violation of the rights; or the remuneration that the author of the viola-tion would have paid to the proprietor of the violated rights for a licencewhich would have legally permitted him to make use of the protectedrights.

Criminal remedies include: preliminary criminal search and seizuremeasures, imprisonment of the infringer and nes.

In criminal proceedings, the trademark owner may request, in addi-tion to preliminary criminal search and seizure measures, the seizure ofa falsied, altered or imitated mark at its place of preparation or where

it is found, prior to its unlawful use; or destruction of a counterfeit markon packets or products that contain it, before they are distributed, evenif the packages or even the products themselves have been discarded.Furthermore, the BIPL establishes that anyone who: reproduces a regis-tered mark wholly or in part, without the authorisation of the registrant, orimitates it in a manner that may induce confusion; or alters the registeredmark of a third party already applied to a product placed on the market, issubject to imprisonment for a period of three months to one year, or a ne.The same penalty applies to anyone caught importing, exporting, selling,offering or exhibiting for sale, hiding or maintaining in stock: a productbranded with an illicitly, wholly or partially reproduced or imitated mark ofa third party; or a product from the accuseds industry or commerce, heldin a vessel, container or package carrying a legitimate mark of a third party.

29 ADR

Are ADR techniques available, commonly used andenforceable? What are the benets and risks?

The BIPL does not have any provision related to ADR. Arbitration proceed-ings are governed by the Arbitration Law (Law No. 9,307 of 23 September

Update and trends

Resolution No. 107/2013, of 19 August 2013, which establishes a stand-alone (autonomous) procedure for requesting the famous status of atrademark in Brazil has entered into force on 10 March 2014, as perthe Ministerial Order No. 27, of the Brazilian Minister of Development,Industry and International Trade. The Ministerial Order established anew schedule of official fees, including the fees for this new procedure.The new independent procedure is an improvement of the old system,where a request for the special protection given to famous marks couldonly be made to the Brazilian Patent and Trademark Office (INPI) as anancillary application to an opposition or administrative nullity actionagainst a conicting trademark application or registration. Now, withthe new resolution, such request can be submitted to the appreciation ofthe INPI anytime during the validity of the mark.

As part of the recent and continuous efforts in the modernisationprocess of its procedures, the INPI published in the Official GazetteNo. 2253, of 11 March 2014, a resolution regarding the new possibilityof ling applications online using exible lists of goods or services, asopposed to being limited to the predetermined lists provided by theINPI in the former system. Moreover, the INPI is currently draftinga new version of its guidelines on the examination of trademark

applications and registrations. The new guidelines is expected to includemodications such as: possibility of correction of the list of goods and/or services in case of typing mistakes and/or colour claim, before theallowance decision is published; a broader range of types of documentsaccepted to prove priority, including online versions; possibility ofaltering the trademark by excluding any irregistrable part, through anappeal, as long as the exclusion does not modify the original distinctivecharacter of the mark; among others.

In May 2014, the First Chamber of Private Law of the Court ofAppeals of the State of So Paulo ruled that expert examination isexcused in cases of trademark violation where the reproduction of themark can be perceived icto oculi. The legal basis for the decision wasarticle 131, of the Brazilian Civil Procedure Code that provides that the judge may freely assess the evidence given the facts and circumstancesbrought before the Court, even when not claimed by the parties, as longas his or her reasons as indicated in the judgment. The reasons indicatedby the judge to excuse the expert examination when the general publiccan readily perceive the reproduction is the delay and increase of costsof the litigation.



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1996). Although arbitration is not commonly used in trademark infringe-ment cases, the parties may agree to arbitration instead of resorting to thecourts. Among the possible benets of using arbitration are the compara-tive speed of proceedings and their condentiality. However, in the eventof a party needing, for example, injunctive relief for the immediate cessa-tion of use of a confusingly similar mark and, by consequence, the imme-diate cessation of the sale of products identied by said mark, arbitrationwould not be an advisable way of proceeding.

30 Famous foreign trademarks

Is a famous foreign trademark afforded protection even ifnot used domestically? If so, must the foreign trademark befamous domestically? What proof is required? What protectionis provided?

No. If not registered and in use in Brazil, a famous foreign trademark isnot afforded special protection in all branches of activity, as foreseen inarticle 125 of the BIPL. On the other hand, in accordance with article 6-bis(1) of the Paris Convention, well-known trademarks in their eld of activ-ity are given special protection, independently of whether they have beenpreviously led or registered in Brazil. Registration certicates in other jurisdictions and advertising materials are normally sufficient to prove to

the BPTO the well-known status of a foreign mark. The BPTO has powersto reject ex officio a trademark application that wholly or partially repro-duces or imitates a well-known trademark. Furthermore, in the event ofthe owner of a well-known trademark ling an opposition or an administra-tive nullity action based on its well-known trademark, it has a period of 60days commencing with the ling of the opposition or administrative nul-lity action, in which to le an application for the registration in Brazil of itswell-known mark.

The BIPL also establishes that signs which imitate or reproduce, whollyor in part, a third-party mark of which the applicant could not be unaware,due to the commercial activity in which he engages, are not registrable astrademarks, if the sign is intended to distinguish a product or service that isidentical, similar or akin to that covered by the existing mark, and is likelyto cause confusion or association with such third-party mark. As a conse-quence, the BIPL enables the owner of a trademark that has not yet beenled or registered in Brazil to challenge third parties who attempt to regis-ter similar or identical trademarks. In this case, it is not necessary for thethird party mark to be well-known in its eld of activity in order to claimthis special condition. Similarly to the situation mentioned in the aboveparagraph, the owner of the trademark has a 60-day term in which to lethe application in Brazil commencing with the date of ling of the opposi-tion or administrative nullity action.

Philippe Bhering [email protected] Kaway [email protected]

Rio Branco, 103, 11th and 12th oorsCentro20040-004 Rio de Janeiro, RJBrazil

Tel: +55 21 2221 3757Fax: +55 21 2224 [email protected]



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