Your trademark is the heartbeat of your business, a symbol that sets you apart and defines your identity. But did you know that keeping it alive requires more than just registration? In Brazil, maintaining your trademark demands ongoing attention to a crucial aspect: the Use of Trademark.
What is Trademark Expiration?
What’s at stake? Failure to use your registered trademark effectively or adhere to legal obligations can lead to its expiration. The National Institute of Industrial Property (INPI) oversees trademarks in Brazil, and non-compliance can render your registration invalid..
Under Brazilian law, using your trademark as initially filed is a must. Subtle changes that do not alter the original distinctive character are acceptable or, alternatively, non-use must be duly justified for legitimate reasons. Failure to meet these standards might terminate your registration, as outlined in the Industrial Property Law.
Unlike other jurisdictions, Brazil evaluates trademark use only after 5 years from its grant date.
So how far could a trademark owner alter the original character? Let us show you below some examples of trademark alterations in which the BRPTO took the view that they did not change the original character, and alongside trademarks in which the BRPTO took the view that the alterations changed the original distinctive character:
In Brazil, unlike elsewhere, proving continuous use within 5 years isn’t obligatory. But if challenged, proof becomes necessary. To justify, the applicant must demonstrate a legitimate interest, citing existing rights or on the prospect of acquiring rights.
Legitimate interest includes:
- Registration or application for registration of an identical or similar trademark to mark identical, similar or related goods or services;
- Registration or application for registration of a geographical indication, well-known trademark or industrial design reproduced by the trademark;
- Personality rights;
- Copyright;
- Other rights that characterize the applicant’s interest or activity in a market segment identical or similar to the products and services marked by the trademark.
To defend a non-use cancellation, how could you prove your use? The key is to establish a good IP culture within your company, especially when comes to evidence preservation and management, and we are going to show you some tips. Within the scope of the trademark Proof of use process, the means of proving its use can vary, and may include elements such as sales invoices, commercial contracts, import or export registrations, and advertising material, among other suitable documents that demonstrate the effective use of the trademark in the market. This evidence of use is essential to support the validity and validity of the trademark registration, attesting to its effective and continuous presence in the commercial context, as established by the relevant legislation.
In order to be accepted as supporting documents for the use of a trademark in a Proof of use proceeding, the evidence must:
- Be issued by the Applicant of the registration or allow the identification of the applicant of the registration. If the trademark is used by an authorized third-party licensee, the documents proving the licensing or authorization of use must be presented;
- Be dated within the investigation period;
- Make reference to the trademark as granted or with minimal changes that do not modify its original distinctive character; and
- Demonstrate the trademark granted by marking the goods or services listed on the registration certificate.
Absolutely, the expiration of a trademark carries significant repercussions for a company and creates opportunities for competitors to capitalize on:
- Loss of exclusive rights: Once the trademark is canceled, the exclusivity of its use is lost, opening up space for competitors to use the same or similar trademarks.
- Lost investments: Investments in branding, advertising and reputation associated with a lapsed brand can be lost, impacting the public’s perception of the company.
- Legal difficulties: The company may face legal difficulties when trying to reclaim the trademark or challenge a third party’s registration of a similar trademark.
Maintaining an active trademark is vital to safeguarding your brand’s identity, market position, and consumer trust. It’s essential to stay vigilant, meet usage requirements, and comply with legal obligations to protect your intellectual property and avoid these detrimental consequences.
For more information on this and other trademark registration procedures, please contact us and we will answer your questions.
APEX INTELLECTUAL PROPERTY
Gui Carvalho – Partner & CEO
+55 51 999563850
Latin America | Brazil
