Private natural or legal persons may only request the registration of a mark relating to the activity that they effectively and legally exercise directly or through undertakings
Industrial Design is considered a temporary title of property, granted by the State to the creators or physical or juridical peoples about of your creations right.
Who may apply?
According to Section 128, of the BIPL - Brazilian Industrial Property Law (Law No. 9279/1996), natural persons, private or public legal persons may apply for the registration of a mark.
Private natural or legal persons may only request the registration of a mark relating to the activity that they effectively and legally exercise directly or through undertakings that they control directly or indirectly, such condition having to be declared on the filing papers, subject to the penalties of the law.
The registration of a collective mark may only be requested by a legal entity representing a group and able to exercise an activity different to that of its members.
The registration of a certification mark can only be requested by a person without any direct commercial or industrial interest in the product or service being certified.
What can and cannot be protected and registered as a trademark?
The general principle is that any visually perceptive distinctive sign, when not prohibited under law, may be registered as a mark.
The definition includes words, logos, composite marks and three-dimensional marks. Product and service marks, as well as collective and certification marks, are allowed. The registration of smells and sound marks is not expressly prohibited by the BIPL but there are no final decisions on this issue.
The BIPL (Section 124) prohibits the registration of the following as marks:
(i) crests, armorial bearings, medals, flags, emblems, official public distinctions and monuments, be they national, foreign or international, as well as any respective designations, figures or imitations;
(ii) an isolated letter, digit or date, except when sufficiently distinctive;
(iii) expressions, figures, drawings or any other sign contrary to morals and good customs, or which offend a person's honor or image, or are an affront to the liberty of conscience, beliefs, religions or to ideas and sentiments worthy of respect and veneration;
(iv) designations or acronyms of a public entity or establishment, when registration is not requested by that public entity or establishment;
(v) reproductions or imitations of a characteristic or differentiating element of a title of establishment or the name of an undertaking belonging to a third party, which are likely to cause confusion or association with such distinctive signs;
(vi) signs of a generic, necessary, common, usual or simply descriptive character, when related to the product or service to be distinguished, or those commonly used to designate a characteristic of the product or service with respect to its nature, nationality, weight, value, quality and moment of production or of giving a service, except when presented in a sufficiently distinctive manner;
(vii) signs or expressions used only as a means of advertising;
(viii) colors and their names, except when arranged or combined in an unusual and distinctive manner;
(ix) geographic indications, imitations thereof likely to cause confusion or signs that might falsely suggest a geographic indication;
(x) signs that suggest a false indication with respect to origin, source, nature, quality or utility of the product or service to which the mark is directed;
(xi) reproductions or imitations of official seals, normally adopted for the guarantee of a standard of any type or nature;
(xii) reproductions or imitations of signs that have been registered as a collective or a certification mark by a third party, without prejudice to the provisions of Article 154;
(xiii) names, prizes or symbols of sporting, artistic, cultural, social, political, economic or technical official or officially recognized events, as well as imitations likely to cause confusion, except when authorized by the competent authority or entity promoting the event;
(xiv) reproductions or imitations of titles, bonds, coins and bank notes of the Union, the States, the Federal District, the Territories, the Municipalities or of any country;
(xv) personal names or signatures thereof, family or patronymic names and images of third parties, except with the consent of the owner, his/her heirs or his/her successors;
(xvi) well-known pseudonyms or nicknames and singular or collective artistic names, except with the consent of the owner, his/her heirs or his/her successors;
(xvii) literary, artistic or scientific works, as well as titles protected by copyright and likely to cause confusion or association, except with the consent of the author or owner;
(xviii) technical terms used in the industry, science or art that is related to the product or service to be distinguished;
(xix) reproductions or imitations, in whole or in part, even with additions, of a mark registered by a third party, to distinguish or certify a product or service that is identical, similar or akin, and which are likely to cause confusion or association with the third party's mark;
(xx) duplications of marks of a single proprietor for the same product or service, except when, in the case of marks of the same nature, they are presented in a sufficiently distinctive manner;
(xxi) necessary, common or usual shapes of a product or of its packaging, or, furthermore, shapes that cannot be dissociated from a technical effect;
(xxii) objects that are protected by industrial design registrations in the name of third parties; and
(xxiii) signs that imitate or reproduce, wholly or in part, a mark of which the applicant could obviously not fail to have knowledge in view of his/her activity, and of which the proprietor is established or domiciled in the national territory or in a country with which Brazil maintains an agreement or guarantees reciprocity of treatment, if the mark is intended to distinguish a product or service that is identical, similar or akin, and is likely to cause confusion or association with such third-party mark.
