In Brazil, registration alone guarantees ownership of a trademark and its exclusive use within Brazilian territory.
Trademarks can be registered in word, figurative, mixed or three-dimensional form.
Registration is valid for 10 years, counted from its date of granting, and is renewable for a period of 10 years successively, in accordance with the interest of its owner.
Trademarks are protected within the field in which their owner operates. It is possible to register identical trademarks, provided that they are in completely different fields. There is an exception for these cases. Highly Renowned trademarks enjoy protection in all trademark classes, which is to say, in all existing fields of activity.
Before using or requesting a trademark, the owner must carry out a prior search, in order to identify possible identical or similar priorities registered by third parties.
It is a priority of VILAGE’s trademark’s department to ensure the rights of our clients over a trademark for its products or services. Our team is highly qualified and focused on the best solution for our clients.
Our work goes beyond requesting trademarks. Comprehensive monitoring is constantly realized in order to prevent third parties from acquiring or registering similar or identical trademarks to those of our clients. Through our specialists, 80% of the trademark conflicts are resolved amicably, without the need to file lawsuits.
Our professionals carry out a careful collection of proofs , organize complete administrative procedures and develop secure strategies that assure our clients the confidence and peace of mind that their trademark is being looked after and their rights defended by Vilage.
Through this department we perform all kinds of extrajudicial services:
- Notifications and counter-notifications;
- Analysis and elaboration of non-disclosure contracts, licensing of the use of trademarks and copyright, use of patents and transfer of technology;
- Administrative services regarding the BPO – Brazilian Patent and Trademark Office, such as oppositions, answers to oppositions, compliance with requirements, appeals against rejections, institution of administrative nullity proceedings, responding to administrative nullity proceedings, requests for forfeiture.
This diversity and range of services are provided continuously and efficiently, so that the intellectual property of our clients is protected and guaranteed, independently of geographical limits.
We have built up our credibility over many years, based on the pursuit of quality, swiftness and results supported by the law – a value of VILAGE Marcas e Patentes.
Frequently Asked Questions
What are the principal risks of not registering my company’s trademark?
You will not be assured exclusive use of your trademark to identify the field of activity in which you act; clients could be diverted, prejudicing your company’s profits, and you would have to accept unfair competition from third parties. In some cases, you could be obliged to change your trademark.
What are the principal advantages of having a trademark registered?
With the registration of the trademark duly validated before the BPO – Brazilian Patent and Trademark Office, in addition to obtaining exclusivity over the mark requested, the holder will be granted the right to prevent third parties from using an identical or similar trademark to the one registered. An advantage that is highly valued by companies is the possibility of franchising the trademark.
Is carrying out a trademark search obligatory?
Carrying out a trademark search is not obligatory. However, this search informs the existence of trademarks that may have been requested or registered previously and which may present an obstacle to the granting (approval) of your trademark.
Do I have to wait for the registration to occur before beginning to use my trademark?
It is not necessary to await the issuance of the trademark’s certificate of registration to being its divulgence. Once it is filed, the owner is granted the right to defend the material integrity or reputation of the requested trademark.
What are the principal stages for registering a trademark?
The principal stages for registering a trademark are: filing, publication, allowance and granting of the registration.
Do I need to have a company to register my trademark?
It is not necessary to have company to register a trademark. It may be requested either by a legal entity or a private individual, provided that the trademark is requested in a class compatible with the activity performed.
From the moment I register my trademark, can anybody else copy it?
With the issuance of the trademark’s registration certificate, the owner will be assured the right to its exclusive use to determine the field of activity claimed throughout Brazil. If third parties use a registered trademark, its owner must notify them and sue them for undue use.
Might anything else happen after the conclusion of the process of registering the trademark?
Yes, third parties could file administrative nullity requests, within a term of 180 (one hundred and eighty) days, counted from the date of granting of the registration by the BPO, or a judicial nullity request within the term of 5 years. That is why the constant monitoring of the trademark is so important.
What can I do if I discover that a competitor is using my trademark?
Issue a notification or file an appropriate judicial measure in order to put a stop to the infractions committed by the party.
If a company from another segment uses my trademark, can I do anything in this respect?
No, since the trademark has protection for the field of activity claimed, except in cases where there is affinity between the segments.
Do I have to pay an annuity to maintain my trademark registration with the BPO?
There is no annual payment to maintain the trademark registration. It is sufficient to pay the trademark extension fee at the end of the term of 10 (ten) years extendable for equal and successive periods.
What happens if I alter the logo of my trademark?
It will be necessary to file another registration application to protect the new logo.
Can I open a franchise just with a trademark application or do I need to wait for the registration to be granted?
You can open a franchise simply with the filing of the trademark, but this information must form an explicit part of the Franchise Offering Circular – FOC and the contract, since the trademark is still under judgment before the BPO and may not be granted.
If I have a registration with the Commerce Registry, why is it important to have a trademark registration with the BPO?
These are different institutions, where the registration with the Commerce Registry protects the company name only in the state sphere and, with the BPO – Brazilian Patent and Trademark Office, the trademark protection is national.
Do I need to await the granting of the registration of my trademark to notify a competitor that is using it?
No. With the registration application it is already possible to adopt this measure.
When can I file a lawsuit against another company that is using my trademark in its products or services?
If you possess a registered trademark, as soon as you become aware of the undue use.
My trademark has suffered opposition. Do I need to do anything?
Yes. It is appropriate to present a Response to the Opposition before the BPO, thus increasing the chances of your application’s success.
I received a notification to stop using my trademark. What should I do?
After receiving the notification, it is important to contract a company specializing in intellectual property in order to respond to it.