TRADEMARKS

Who can obtain a trademark registration?

A trademark registration can only be obtained by private natural or legal persons in respect of the activity that they effectively and legally carry out... (copier do art. 128).

Is prior use required to obtain a trademark registration?

No, use is only required after 5 years from the date of registration in to avoid its cancellation on non-use on the request of a party with a legitimate interest.

What kind of marks can be registered under the Brazilian practice?

The Brazilian trademark law provides for the registration of trade marks, service marks,
collective marks, indications of origin and certification marks. Their form can be words in plain block, word-and-device combination, device and three-dimensional.

May any distinctive and visually perceptible sign be registered as a trademark in Brazil?

No. Under the terms of article 124 of the Brazilian Industrial Property Law the following shall not be registrable:

I - coats of arms, armorial bearings, medals, flags, emblems, badges and official, public, national, foreign or international monuments as well as any designations, figures or imitations thereof;
II - an individual letter, number and date, per se, except when it is given sufficiently distinctive form;
III - expressions, figures, drawings or any other sign contrary to morality and decency or which offend the honor or image of a person or which offend freedom of conscience or belief, religious cult or ideas and feelings worthy of respect and veneration;
IV - designations or initials of public entities or agencies, where registration is not required by the public entity or agency;
V - reproductions or imitations of the characteristic or differentiating element of the title of an establishment or the name of an enterprise belonging to another party, which is likely to mislead or cause confusion with such distinctive signs;
VI - signs that are generic, necessary, common, ordinary use or simply descriptive when related to the product or service to be distinguished, or those commonly used to designate a characteristic of a product or service as regards its nature, nationality, weight, value, quality and time of production or providing of a service, except where they are given a sufficiently distinctive form;
VII - signs or expressions used merely as a means of advertising;
VIII - colors and their names, except where arranged or combined in an unusual and distinctive manner;
IX - geographical indications, or imitations of such indications that are likely to mislead, or signs that might wrongly suggest a geographical indication;
X - signs inducing false indication regarding the origin, source, nature, quality or usefulness of the product or service to which the mark is applied;
XI - reproductions or imitations of official seals normally used to guarantee a standard of any type or nature;
XII - reproductions or imitations of signs registered as a collective or certification marks by another party, without prejudice of provisions of article 154;
XIII - names, prizes or symbol of official or officially recognized sporting, artistic, cultural, social, political, economic or technical events or imitations likely to cause confusion, except when authorized by the competent authority or entity promoting the event.
XIV - reproductions or imitations of titles, bonds, coins or bank notes of the Union, States, Federal District, Territories, Municipalities or any country;
XV - names of individuals or signatures, family names and surnames and images of third parties, except with the express consent of the title holder, the heirs or successors;
XVI - widely known pseudonyms or nicknames, singular or collective artistic names, except with the consent of the owner, his heirs or his successors in title;
XVII - literary, artistic or scientific work, as well as titles protected by copyrights which are likely to mislead or cause confusion, except consent of the author or owner;
XVIII - technical terms used in the industry, science and art, related to the product or service to be distinguished;
XIX - reproductions or imitations, in whole or in part, even with additions, of a mark registered by another party, to distinguish or certify a product or service, which is identical similar thereto, for the same or related goods or services, which are likely to cause confusion or association with another’s mark;
XX - duplication of marks of the one and same owner for the same product or service, except where, in the case of marks of the same nature, they are presented in a sufficiently distinctive manner;
XXI - the necessary, common or usual shape of a product or packing, or the shapes form that cannot be dissociated from a technical effect;
XXII - objects that are protected by industrial design registration owned by third parties; and
XXIII - signs that imitate or reproduce, in the whole or in part, a mark which the applicant could not be aware of in view of his activity, the owner of which is established or domiciled on the national territory or in a country with which Brazil has an agreement or that affords reciprocal treatment, if the mark is intended to distinguish a product or service that is identical, similar or related, if it is likely to cause confusion or association with the mark of such other person.

Are multiple class applications allowed in Brazil?

No, Brazil only allows for uniclass applications. However, the matter is under study and multiclass applications are expected to adopted possibly in the course of 2006.

Which is the classification system adopted in Brazil?

Brazil adopts the Nice International Classification System, 8th version.

Can a mark be registered in the name of more than one owner?

No. The Brazilian practice only allows for the registration of a mark, or assignment thereof, in the name of sole owner.

What is the duration of a trademark registration?

A trademark registration is valid for a 10-year period, renewable every 10-year.

What is the delay until a registration is granted?

The usual delay has been about five years due to the tremendous backlog at the Trademark Office. However, measures are being taken to reduce the backlog by the end of 2006. The prospects are that the delay will be reduced to 12 months in the near future.

PATENTS AND UTILITY MODEL

Who can obtain a patent?

The author of the invention or of a utility model, or his heirs or successors in title, na assignee or any person designed by the owner by law.

What cannot be considered as an invention or utility model?

In accordance with the Law of Industrial Property, the following shall not be considered an invention or utility model:

- discoveries, scientific theories and mathematical models;
- purely abstract concepts;
- schemes, plans, principle or method of a commercial, accounting, financial, educational, or adversitising, games of chance and surveillance;
- literary, architectural, artistic and scientific works or any aesthetic creation;
- computer programs per se;
- presentation of information;
- rules for games;
- techniques and methods for operations or surgery, as well as methods for therapy or diagnosis applied to human or animal body; and
- all or part of natural living beings and biological materials found in nature, or isolated therefrom, including the genome or germ plasma of any natural living being and the natural biological processes.

Can any invention or utility model that meets the legal requirements be patented?

No, the Industrial Property Law establish restrictions to the grant of patent, and the following is not patentable:

- anything contrary to morality, decency or public safety, order and public health;
- Substances, materials, compounds, elements or products of any kind, including the modification of their respective physical-chemical properties and the respective processes for obtaining or modifying them, when they result from the transformation of the atomic nucleus; and
- The whole or part of living beings, except for the transgenic microorganisms meeting the three requirements of patentability: novelty, inventive step and industrial application, and that it be not a mere discovery.
It should be noted that transgenic microorganisms are organisms, except the whole or part of plants or animals, which due to human direct intervention in their genetic composition, express a characteristic that cannot be normally achieved by the species under natural conditions.

How long does it take until a patent is granted?

In view of the tremendous backlog of cases at the Patent Office, it is taking about 6 years for a patent to be granted. This delay may be increased in case official actions are issued. It should be noted, however, that this agency is taking measures to reduce the backlog and, therefore, we are confident that soon this delay will be considerably reduced.

What are the requirements for a design to be registered?

The requirements for registration of a design are the novelty and originality. A design is new when it is not comprised in the state of the art, and is original when it has a distinctive visual configuration as compared to prior existing objects.