TRADEMARK AND BRANDING TRADEMARK AND BRANDING LEGAL ISSUES LEGAL ISSUES

PRACTICE TIPS & TRENDSPRACTICE TIPS & TRENDSBRAZIL

INTRODUCTION

“Brazil is the country of the future, and always will be.”

Attributed to Stefan ZweigViennese-born writer

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

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

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

JAMES WALKER

LAURA ASHLEY

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

BAADER GROUP OF COMPANIES

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

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.

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

List of Current High Renown Trademarks

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.

Kris Williamson

Partner – Lext Intellectual Property LLC

Barrister (England & Wales)

Attorney (Brazil)LEXT Intellectual Property LLCRua 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