PROSECUTION GUIDELINES

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You will find here all the important information about filing trademarks, designs and patents.

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Brazil

GDP:$1,869 TRILLION

IMPORTS: $261,660 BILLION

POPULATION: 209,469,333

TOTAL AREA: 8,515,767 KM2

OFFICIAL LANGUAGES: PORTUGUESE

CURRENCY: BRAZILIAN REAL (R$) (BRL)

Local time:

WIPO-administered Treaties:

Contracting Party of The Paris Convention: YES.
Contracting Party of The Hague Agreement on Industrial Designs: YES.

Applicable Law:

Industrial Property Law 9279/96.

Grace period for filing applications, from disclosure:

180 days.

Multiple design applications -one application for different embodiments- available:

YES, the application must refer to a single object, a plurality of variations being permitted, provided that they are destined for the same purpose and maintain between them the same distinctive characteristic, each application is limited to a maximum of 20 variations.

Formal filing requirements:

Drawings, including all views of the object.
Brief description of the object.
Locarno class.
Power of Attorney (neither notarisation nor legalisation required).
Assignment document (neither notarisation nor legalisation required), when applicable.
Priority document, when applicable.

Locarno classification:

YES.

Deferred publication:

YES, 180 days counted from the filing date in Brazil.

Registration Proceeding Outline:

Filing.
Formal examination.
Decision.

Opposition:

Nullity proceedings may be instituted ex officio or at the request of any person with a legitimate interest within 5 years from granting. A request or an ex officio institution will suspend the effects of grant of a registration if presented or published within 60 days from grant.

Average time from filing to grant:

1-2 years.

Term of Protection and Maintenance:

25 years: initial term of 10 years renewable for 3 successive terms of 5 years.

WIPO-administered Treaties:

Contracting Party of The Paris Convention: YES.
Contracting Party of The Madrid System: YES.*

* Brazil can only be designated in IR marks filed after 2 October 2019.

Trade Mark Law in force:

Industrial Property Law No. 9279/1996.

Classification:

Nice classification, 11th edition.

Multiclass Applications:

Possible for IR trade marks.
Not possible for national trade marks.

Registrable trade marks:

Words, names, acronyms, letters, numbers, devices, combination of colours, three-dimensional forms and any combination of the aforementioned signs.

Non-traditional trade marks, such as, smell, sound, movement, holograms and gestures are not subject to registration in Brazil. However, they are not completely unprotected, as they can be defended through Unfair Competition legislation.

Formal filing requirements:

Power of Attorney merely signed (no legalisation and no notarisation required) within 60 days from filing date.
Scanned copy of the priority application and its translation into Portuguese within 120 days from filing.

Examination:

Absolute grounds for refusal: YES.
Relative grounds for refusal: YES.

Opposition period:

60 days from publication date.

Average time from filing to grant:

Approximately 3 years, unless any obstacles were raised.

Term of protection:

10 years from the date of registration.

Use requirements:

YES. Cancellation can be requested if the trade mark has not been used for 5 years, counting from the registration date. Partial cancellation action is possible.

Renewal terms:

1 year prior to the renewal date.

Grace period:

6 months.

Link to Trade Mark Office:

http://www.inpi.gov.br/

WIPO-administered Treaties:

Contracting Party of The Paris Convention: YES.
Contracting Party of The Patent Cooperation Treaty (PCT): YES. Due term for entry into national phase: 30 months.

Patent Law in force:

IP Law 9279/1996.

Types of protection available:

Patent of Invention.
Utility Model.
Patent of addition.

First filing requirements with the local Patent Office for inventions made by nationals:

NO.

Formal filing requirements:

Power of Attorney merely signed (no legalization required) within 60 days from filing.
Assignment document from the inventors merely signed (no legalization required) within 60 days from filing (180 days if Convention application). Not required under certain circumstances.
Certified copy of priority application within 180 days from filing (not required for entry into national phase of PCT applications provided that PCT/IB304 form is available).

Filing of the patent application in a foreign language:

NO. At least, translation into Brazilian of the claims, title and abstract must be submitted upon filing. Late submission of the complete Brazilian translation is acceptable within 30 days from issaunce of office action, if convention application, or 60 days from issuance of an office action if pct national phase.

Substantive examination must be requested by the applicant:

YES, within 36 months from filing date (international filing date in the case of entry into national phase of PCT).

Search report must be requested by the applicant:

NO.

Observations by third parties:

YES. Between publication and completion of the technical examination.

Opposition:

YES. Between publication and completion of the technical examination.

Average time from filing to grant:

10 years.

Term of protection for patents:

20 years from filing date.

Term of protection for utility models:

15 years from filing date

Differences between utility model and patent:

UM suitable for utensils, instruments, tools, apparatus, devices, or any parts or improvements thereof, but not to chemical products, methods or uses; lower threshold for inventive step.

Maintenance:

Yearly also during prosecution of the application.

Marking of the product with the application/ patent number:

NOT mandatory.

Compulsory licensing:

YES.

Link to Patent Office:

http://www.inpi.gov.br/

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