Introduction
Registering a trademark with INPI (Instituto Nacional da Propriedade Industrial) grants exclusive rights over a brand name, logo, or slogan for 10 years, renewable indefinitely. However, a trademark is not guaranteed permanent protection—it can be canceled if the owner fails to comply with legal requirements.
To avoid losing your trademark rights, it’s essential to understand the main reasons for trademark cancellation and how to prevent it.
This article explains the causes of trademark cancellation in Brazil, how to protect your trademark, and what to do if someone tries to cancel it.
1. What Causes Trademark Cancellation?
1.1 Non-Use of the Trademark for More Than 5 Years
In Brazil, a registered trademark must be actively used in the market. If a trademark remains unused for five consecutive years, it can be canceled upon request by a third party.
✅ Example:
- A company registers the trademark “EcoDrink” for a new beverage but never launches the product.
- After five years, a competitor requests cancellation, arguing that the brand is not being used.
📌 Legal Basis: Article 143 of Brazilian Industrial Property Law (Law No. 9.279/1996).
1.2 Failure to Renew the Trademark on Time
A trademark is valid for 10 years, but if the owner forgets to renew it, the trademark expires and can be registered by someone else.
📌 Grace Period: After expiration, there is a 6-month extension to renew with an additional fee.
1.3 Trademark Becoming Generic
If a brand name becomes a common term for a product category, it loses exclusivity and can be canceled.
✅ Example:
- “Escalator” was once a registered trademark but became a generic term, losing protection.
1.4 Trademark Conflicts and Legal Disputes
If a court rules that a trademark was wrongfully registered, it can be invalidated.
✅ Example:
- A company registers “TechPhone”, but another company proves it had prior rights to the name.
2. How to Prevent Trademark Cancellation?
2.1 Use Your Trademark in Commerce
✅ Ensure the brand is used continuously in marketing, packaging, and sales.
✅ Keep records of trademark usage, including invoices, advertisements, and product labels.
📌 Tip: If the brand is not being used, license it to another company to maintain its validity.
2.2 Renew Your Trademark on Time
✅ Track renewal deadlines and apply before the 10-year expiration date.
✅ Monitor the INPI website to ensure your registration is active.
2.3 Defend Your Trademark Against Cancellation Requests
✅ If a competitor files a cancellation request, submit proof of use (e.g., sales records, advertisements, product packaging).
✅ If the case goes to court, hire a trademark attorney to defend your rights.
2.4 Prevent Genericization of Your Trademark
✅ Use legal disclaimers (e.g., “Velcro® is a registered trademark”).
✅ Avoid using the brand name as a generic word in marketing.
3. What to Do If Someone Tries to Cancel Your Trademark?
🚨 Step 1: Check the Cancellation Request
- If another company requests cancellation, INPI will notify you.
🚨 Step 2: Gather Proof of Trademark Use
- Submit documents such as sales invoices, ads, and contracts.
🚨 Step 3: File a Legal Defense with INPI
- Respond within 60 days with legal arguments and evidence.
🚨 Step 4: Appeal the Decision (If Necessary)
- If INPI cancels the trademark, you can appeal in court to regain protection.
4. Common Mistakes to Avoid
❌ Not Using the Trademark Regularly – Lack of use for 5 years can lead to cancellation.
❌ Forgetting to Renew – Failure to renew on time results in permanent loss.
❌ Ignoring Cancellation Requests – Always respond to legal threats quickly.
❌ Letting the Trademark Become Generic – Maintain brand exclusivity with legal disclaimers.
Conclusion
A registered trademark is a valuable business asset, but it requires proper maintenance to prevent cancellation. By actively using the trademark, renewing it on time, and defending it against legal challenges, businesses can secure long-term brand protection.
✅ Monitor and renew trademarks every 10 years.
✅ Ensure continuous commercial use to avoid cancellation due to inactivity.
✅ Defend your trademark if challenged by competitors.
By following these strategies, businesses can keep their trademarks protected and prevent costly legal disputes.
