BUY REAL ESTATE
7 de December de 2021
HOW TO INCORPORATE A COMPANY IN BRAZIL
7 de December de 2021As defined by WIPO – World Intellectual Property Organization – “intellectual property (IP) refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce”.
Intellectual Property is divided into two categories: (i) industrial property, which includes inventions (patents), trademarks, industrial designs, and geographic indications of source; and (ii) copyright, which includes literary and artistic works such as novels, poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and sculptures, and architectural designs. Rights related to copyright include those of performing artists in their performances, producers of phonograms in their recordings, and those of broadcasters in their radio and television programs.
Intellectual property protection allows individuals to profit from their innovative or creative activities thereby creating an incentive to innovate and promote technological progress. In this sense, industries such as pharmaceuticals, technology, software, entertainment and so on are extremely dependent on intellectual property protection. For this reason, the protection of intellectual property rights plays an important role in the growth of the world economy.
In Brazil there are several rules and acts to protect and govern intellectual property rights and technology transfer, such as the Industrial Property Act, tax law acts and the internal regulations provided by the Brazilian National Institute of Industrial Property (INPI, also known in English as the BrPTO, as for Brazilian patent and trademark Office).The INPI is the public agency responsible for the registration of trademarks and other intellectual property rights.
Once the trademark is registered in Brazil, one may protect the identification of its product or services. This means that other agents of the market (competitors) will not be allowed to use the same trademark or very close meanings that might lead costumers to be confused. Moreover, it is possible to contract with other companies to allow them to use the trademark.
1) First step: previous research before the request at the INPI
In order to register a trademark in Brazil, one has to file a request at the INPI. However, this should not be the first step for an investor. It is highly recommended to take a step back and start by doing previous research about similar trademarks. This important research does not take long and allows the investor to understand what kind of market it will be facing in Brazil. Two scenarios may be distinguished: (i) a recent product or service that the international investor is developing; and (ii) a product that already exists and the investor wants to bring to Brazil.
In the first scenario, if the product or service is still under development and the investor considers the Brazilian market as an important asset for its success, the research of similar trademarks may indicate the need to shift the trademark or make minor adjustments in its layout. In case there is a trademark already registered in Brazil, our law firm may offer different scenarios and solutions for the proper registration of the client’s trademark.In the second scenario, in case the product or service exists in another country and a similar trademark is under registration in Brazil, some measures can be taken. For example, one may file for a registration of a renowned trademark or a notorious trademark, both of which grants a higher level of protection. Another possible solution is to settle amicably with the other company to prevent them from going through with the registration process. As a last resort it is also possible to file a lawsuit to cancel the trademark already registered or to rest the registration process, for example when the company is acting in bad faith and unlawfully trying to take advantage of the already successful trademark of the international investor.In summary, the previous research is an important step to develop a strategy for the protection of the international investor’s trademarks. Our law firm is highly experienced in this kind of research and scrutinizes the INPI database to provids a thorough report within a couple of days.
2) Registration process
Once the strategy is developed, the registration process formally begins by filling a request at the INPI (BrPTO). The registration form must be properly fulfilled and one must enclose the image of the trademark. It is possible to file online and while anyone can file the trademark, it is highly recommended to use legal services. Filling the request on its own may lead to the rejection of the request for a minor avoidable mistake.
Another important step in fulfilling the registration form is to properly choose the areas of protection, i.e. the classes of the market. A trademark is registered to identify a product or a service in one area of the market, for example a trademark for cosmetic products or for food. On the registration form, one indicates to which classes it is applying for protection. The same trademark may be registered for different classes, but one must pay the fees for each class. Therefore, it wise to identify the strategy for the product or service in Brazil, in order to guarantee proper protection and avoid unnecessary costs. Once again, the report of the previous research plays an important role.
Once the requested is filed, the INPI will assess the information and search for the existence of other similar trademarks on the same classes. All requests for new trademarks are published at the INPI’s website. Once the request is published, other companies may present a request (called an ‘opposition’) for the dismissal of the request based on previous use or existence of similar trademarks (see further information in #4 below). The opposition is not a lawsuit; the INPI analyzes and adjudicates the matter.The registration of a trademark takes around 4 years to be granted. However, a company does not have to wait until the end of the registration process to start using and profiting from its trademark.
3) How long does the trademark protection last
The trademark is protected for 10 years, but this period can be extended indefinitely as long as the company still uses and exploits the trademark. To extend the period of protection, a request to renew the period must be filed.
4) Protection of a trademark already registered at the INPI (BrPTO)
Once the trademark is registered, there three usual scenarios that require proper measures: (i) preventing other companies from obtaining the registration for similar trademarks; (ii) prohibiting others from unauthorized use of the trademark; and (iii) preventing customers from being misled by similar trademarks.
First, the preventive approach, which is to prevent other registration of similar trademarks. As mentioned in #2 above, one of the steps of the registration process is to publish all the requests filed at the INPI (BrPTO). Our law firm uses an app that contains all our clients’ trademarks and whenever a similar trademark is requested we receive a notice. We check if there is any possibility the trademark is jeopardized and inform the client. Should we consider the trademark is at stake, we can file an opposition. If the INPI accepts our arguments, it will reject the request. This is an administrative request and, as a last resort, one may go to court for a judicial ruling.
The second approach is to prohibit the unlawful use of the trademark. Sometimes a company uses a trademark that belongs to someone else, without proper authorization, to label its product or service. This is a counterfeit, a crime under the Brazilian law. Measures can be taken both on the criminal and civil aspects. The unauthorized use of the trademark may render payment for damages under tort law.
Finally, the third common situation is to identify trademarks not registered at the INPI, but which are quite similar to a registered trademark and thus may mislead the costumer. Although a lawsuit is always possible, its length and costs indicate it shall not be the first option. A more reasonable cost and time efficient solution is to notify the company using the misleading trademark and invite it to stop the use. In many cases it is possible to obtain an amicable settlement.
5) Further information
If you are considering registering your trademark in Brazil, we recommend that you also check our guide for:
– How to incorporate a company in Brazil
– How to register and protect a patent in Brazil
