Trademark registration is a crucial step in securing exclusive rights to your brand. However, during the process, third parties may challenge your application by filing an opposition with the Brazilian National Institute of Industrial Property (INPI). If this happens, knowing how to defend yourself effectively is key to ensuring the approval of your trademark.
In this article, we will explain what trademark opposition is, why it happens, and how you can defend your brand if someone files an opposition against your registration.
What Is a Trademark Opposition?
A trademark opposition is a legal challenge filed by a third party against your trademark application during the publication phase in the Revista da Propriedade Industrial (RPI). The goal is to prevent your brand from being registered, usually due to claims of similarity, prior rights, or legal restrictions.
Once your trademark application is published in the RPI, there is a 60-day period in which anyone who believes your trademark infringes on their rights can file an opposition with INPI.
Common Reasons for Trademark Opposition
An opposition may be filed for several reasons, including:
1. Similarity to an Existing Trademark
- If your brand name, logo, or slogan is too similar to a previously registered trademark, the owner may argue that consumers could be confused.
- Example: If you apply for “TechZone”, and an existing trademark “TechZoom” is in the same business category, the owner of TechZoom might oppose your registration.
2. Prior Rights
- Someone who has been using a brand for a long time but hasn’t officially registered it yet might claim prior use rights.
- In Brazil, prior and proven commercial use may be enough to challenge a trademark registration.
3. Violation of Legal Restrictions
- Some words, symbols, or brand elements cannot be registered (e.g., national flags, public institutions’ names, generic terms).
- If your brand violates any of these restrictions, a third party (or even INPI) may oppose the registration.
4. Bad Faith Applications
- If someone suspects that your application was filed in bad faith—for example, copying an international brand not yet registered in Brazil—they may oppose it.
How to Defend Your Trademark Against an Opposition
If your trademark faces opposition, you must respond within 60 days by filing a manifestation (counter-argument) with INPI. Here’s how to do it:
Step 1: Analyze the Opposition Grounds
Carefully review the arguments and evidence presented by the opposing party. The opposition should include legal justifications and proof of potential conflicts.
Step 2: Gather Supporting Evidence
To strengthen your defense, prepare evidence such as:
✔ Proof of prior commercial use of your brand
✔ Market studies showing no confusion with the opposing brand
✔ Arguments demonstrating that your brand is sufficiently distinct
✔ Expert reports on trademark differences
Step 3: Prepare a Strong Legal Argument
Your manifestation should:
📌 Clearly explain why your brand does not infringe upon existing trademarks
📌 Cite INPI regulations and trademark law to support your claim
📌 Highlight differences in visual identity, phonetics, and target audience
Step 4: File Your Manifestation With INPI
- Submit your response through the e-INPI system
- Pay any applicable fees
- Monitor the RPI for updates on the decision
After receiving your response, INPI will analyze the case and decide whether to accept or reject the opposition.
What Happens After the Opposition Process?
✅ If INPI Rejects the Opposition
Good news! Your trademark will continue in the registration process and may be approved after examination.
❌ If INPI Accepts the Opposition
Your trademark application may be rejected. However, you can still file an appeal (Recurso ao Indeferimento) within 60 days to try to reverse the decision.
How to Prevent Trademark Opposition?
To avoid opposition and increase your chances of a successful registration, follow these best practices:
✔ Conduct a Trademark Search Before Applying
- Use the INPI search tool to ensure your brand name is unique.
✔ Choose a Distinctive and Registrable Brand Name
- Avoid generic words or terms too similar to existing trademarks.
✔ Monitor the RPI for Potential Conflicts
- Keep track of new trademark applications that may conflict with yours.
✔ Consult a Trademark Specialist
- If you’re unsure, getting legal advice can save time and prevent future disputes.
Conclusion: Protect Your Trademark from Opposition
Facing a trademark opposition can be challenging, but with the right strategy, you can defend your brand effectively. Acting quickly, gathering solid evidence, and presenting a strong legal argument are key steps in securing your trademark registration.
By conducting thorough research and choosing a unique brand name, you can reduce the risk of opposition and ensure your business identity is legally protected.
