Madrid Protocol: How to avoid office actions in the Brazilian designations?

Learn the particularities of the country and avoid complications in international registrations that designate Brazil.

From October 2, 2019 to January 27, 2022, 267 requests were certified by Brazilian Patent and Trademark Office (INPI-BR) as the office of origin. In the same period, 23,517 Madrid protocol designations (57,358 classes) were presented in Brazil; the United States lead the ranking of countries of origin, with 6,050 designations.

Hiring professionals specialized in intellectual property is highly recommended, as they will be able to review the request in light of Brazilian laws and practices. It is important to remember that the notification of the existence of an opposition is only published in the Industrial Property Official Magazine (RPI) and no communication is sent to the applicant (or their representative) of the international registration through the International Bureau.

The Brazilian Institute has already published 10,230 decisions and 588 office actions regarding International Registrations that designate Brazil. After analyzing these requirements, my partner Sonia Carlos Antonio and I highlighted the following topics as the most relevant to avoid complications in Brazil.

1. Classification

More than 30% of office actions raised in the Brazilian designations refer to classification. Brazil follows the NICE international classification and, therefore, we recommend the use of the items provided by it or, at least, using them as an indicator, since specification with imprecise, vague, incomprehensible, or linguistically incorrect terms may cause office actions.

For instance, the item “diagnostic products for medical use” covers items included in class 10 (diagnostic apparatus for medical use) and in class 5 (diagnostic preparations for medical use). In this case, the expression “products” becomes a generic specification, being necessary to elucidate the type of diagnostic product, not just its purpose (medical use), so it is important to use a more assertive description.

Other examples in this matter are: “hygiene products”, “accessories”, “sensors”, “manufacture and production to order by third parties”, “retail services”, “commercial services”, “wholesale services”, “provision of podcasts” and “installation, cleaning, repair, and maintenance information”.

Furthermore, in regards to the “software” good in class 9, we recommend adding the qualifier “downloadable”, so it will be not necessary to resubmit a corrected specification.

Finally, pay attention to the word “certification”! We recommend the use of “quality control”, “validation” or “conformity assessment”, as the term “certification” must be used only when referring to a certification mark application in Brazil.

2. Applicant’s name and address

The binomial Social Name/Address is decisive for the identification of foreign applicants at the INPI-BR. If there is a divergence between the name/address of the applicant of the designation and the applicant/owner of an existing application/registration in Brazil, it is possible to expect an office action for clarification.

In order to respond to any office action in this regard, it is possible to change the name/address or, alternatively, present documents demonstrating that the companies are part of the same economic group, as according to INPI/PROC/DIRAD Opinion nº 12/2008, it is possible the coexistence of similar trademarks with different owners belonging to the same group. It is important to note that mere statements or just the fact that both companies have the same partners are not accepted and that duality of trademarks is prohibited.

Thus, if the applicant has already filed trademarks in Brazil, it is advisable to analyze them and proceed with the adjustments before the designation, in order to avoid office actions.

3. Illicit Goods/Services

In accordance with Art. 128 §1 of the LPI, private legal entities may only apply for a trademark registration relating to the activity they effectively and lawfully carry out. The INPI-BR Trademarks Guidelines describes that, in the case of a specification containing products or services considered illegal by Brazilian legislation or when there is doubt as to their illegality, an office action will be raised for the applicant to clarify its legality; to replace them with legal items compatible with the claimed class or remove items deemed to be illicit.

In case of replacement of goods or services, the application will be republished and if the specification is formed solely by illicit goods or services, the application should be rejected.

As an example of illegality, we have Law No. 9,215 of 04/30/1946, which prohibits the exploitation of gambling services in the country. Designations were observed that were required to cover “gambling or betting services” in different classes, such as 09, 28, 35, 38, and 41.

Currently, seven cannabis products for medicinal purposes only are approved by the National Health Surveillance Agency (Anvisa) in Brazil. Therefore, office actions have been raised on trademarks that describe items such as marijuana, cannabinoids, cannabis, hemp, cannabidiol (CBD), and/or tetrahydrocannabinol (THC).

Other illicit products can also generate demands, namely: cocaine, strychnine, opium, chloroform, steroids, curare, and narcotics.

4. Civil Name and Pseudonym

According to Article 124, items XV and XVI, of the Brazilian Industrial Property Law, it is not registrable as trademark the civil name or its signature, third parties’ family or patronymic name and image, famous pseudonym or nickname, singular or collective artistic name, except with the consent of the owner, heirs or successors.

Therefore, the INPI-BR raises office actions for the applicant to prove to be the owner (or to have authorization) of the civil name or pseudonym, nickname, signature, etc.

5. Three-dimensional marks

Amendments to an international registration trademark are not permitted, as provided in section 81.02 of the Guide to the International Registration of Marks. Thus, the image of the Brazilian designation must be identical to the international registration.

Although problems in sharpness, presentation of publications or mark variations, erasures in the image, and also several copies of a three-dimensional trademark in the same image do not cause formal office actions in Brazil, during the substantive examination, the INPI-BR may request additional details of the object filed as a three-dimensional mark, so that it can be viewed from all angles (example: side, top, bottom and perspective views).

Also, the Institute may request clarification of how the required object plays the role of a trademark for all goods/services described in the specification, that is, how the object will be used as a mark.

It is important to mention that proof of use is not required, but a demonstration/specimen of how the mark is applied to the claimed goods/services, so the distinctiveness can be analyzed. Therefore, the more accurate the views, the more likely you are to avoid office actions.