Only the trademark registered before INPI (Brazilian Patent and Trademark Office) guarantees the ownership and its exclusive use in the Brazilian territory.
If you do not register your trademark in Brazil, other companies may do it first and, as Brazil follows the first-to-file system, it will be more expensive and harder to try to cancel third parties’ marks. Furthermore, you should be ordered to cease and desist of using your trademark in the country.
Benefits of trademark registration:
– Exclusive use of the trademark in the field of activity that it is registered;
– Right to prevent third parties from using your trademark;
– Ownership: your mark may be sold, assigned, etc.;
– A registered trademark inhibits third parties from copying it;
– Registration transmits credibility, seriousness, and reliability to customers.
Risks regarding the lack of protection:
– Your company may receive Cease and Desist Letters or Summons (Lawsuit). Besides inconveniences caused and the time spent to solve the dispute, your company should support high costs;
– Your company may be ordered to stop using the trademark immediately and unexpectedly;
– Your company may be ordered to pay damages for misusage of third party’s trademark;
– Your company may lose all advertising material and investments made on a trademark that can be owned by a third-party;
– Your company may lose its credibility already achieved due to the change of name.
Cases: US companies in Brazil
US companies had inconveniences with their marks in Brazil, we would like to bring you two famous cases:
Trademark “iPhone”
Brazilian company IGB ELETRONICA S.A filed the Brazilian trademark “G GRADIENTE IPHONE” in 2000, which was granted in 2008 (one year after Apple started to sell their “iPhones” in Brazil).
A Lawsuit was filed by Apple and the Supreme Court of Justice (STJ) decided that Apple may use the trademark “iPhone” and IGB ELETRONICA S.A may use trademark “G GRADIENTE IPHONE”, both currently coexisting in Brazil.
Legal Action No. 0490011-84.2013.4.02.5101
Trademark “Johnny Rockets”
When the US company started doing business in Brazil, a third party had already registered the trademark “Rockets” in the country and used the same layouts of Johnny Rockets.
In 2011, a Lawsuit was filed against the Brazilian Company before Brazilian Federal Courts. The US company has only won the case in 2014.
Legal Action No. 0808458-18.2011.4.02.5101
Registration is the only way to prove that your trademark belongs to you. Don’t risk losing your company’s identity in the market.
