Introduction
Registering a trademark with INPI (Instituto Nacional da Propriedade Industrial) gives a business exclusive rights over its brand in Brazil. However, even after approval, your trademark can still be challenged through an Administrative Nullity Process (Processo Administrativo de Nulidade – PAN).
This process allows third parties to request the cancellation of a registered trademark, claiming it should never have been approved. As legal experts say, “A trademark is only as strong as its legal defense.” If your brand is challenged, knowing how to respond strategically can mean the difference between keeping or losing your trademark rights.
In this article, we’ll explain how the Administrative Nullity Process works, why trademarks are challenged, and what steps to take to defend your brand.
1. What Is the Administrative Nullity Process (PAN)?
🚨 The Administrative Nullity Process (Processo Administrativo de Nulidade – PAN) is a legal challenge against a trademark that has already been granted by INPI.
✅ Who Can Request It?
- Any third party who believes the trademark was registered unfairly.
- INPI itself, if it identifies an error in the approval process.
✅ Why Does It Exist?
- To correct mistakes in trademark approvals.
- To prevent brands from unfairly monopolizing a name.
📌 Example:
- A clothing company registers “GoldWear”® as a trademark.
- A competitor claims that “GoldWear” is too similar to their brand “GoldFit”, and files a nullity request with INPI.
🚨 Lesson: Even after approval, a trademark can be legally questioned.
2. Why Might a Trademark Be Challenged?
2.1 Similarity to an Existing Trademark
🚨 Most nullity requests happen because the challenged trademark is too similar to an already registered brand.
✅ Example:
- A company registers “SmartTech”®.
- Another business with “SmartTek”® claims it causes confusion among consumers.
- They file a nullity request to cancel the “SmartTech” trademark.
📌 Solution: Before registering a trademark, conduct a thorough search to avoid conflicts.
2.2 Lack of Distinctiveness
🚨 A trademark must be unique and not merely descriptive.
✅ Example:
- A company registers “Super Clean” for cleaning products.
- A competitor challenges the trademark, arguing that “Super Clean” is a generic term and should not be exclusive.
📌 Solution: Trademarks should be unique and creative to reduce the risk of nullity challenges.
2.3 Errors in INPI’s Approval Process
🚨 If INPI made a mistake in approving a trademark, it can be canceled.
✅ Example:
- A business registers “Brasil Café”.
- INPI later realizes that a similar brand was already registered, but was overlooked.
- INPI itself starts a nullity process to correct the error.
📌 Solution: Monitor your trademark application carefully to ensure it meets all legal requirements.
3. How Does the Administrative Nullity Process Work?
✅ Step 1: Filing the Nullity Request
- A third party submits a nullity request within 180 days after the trademark is granted.
- The request must include legal arguments and evidence showing why the trademark should be canceled.
✅ Step 2: INPI Notifies the Trademark Owner
- INPI publishes the challenge in the Revista da Propriedade Industrial (RPI).
- The trademark owner has 60 days to submit a defense.
✅ Step 3: INPI Evaluates the Case
- INPI reviews both sides and makes a final decision.
✅ Step 4: Possible Outcomes
- The Trademark Is Maintained – If the defense is strong, the nullity request is denied.
- The Trademark Is Partially Canceled – INPI may limit its use to specific products or services.
- The Trademark Is Fully Canceled – The registration is removed from INPI’s database.
📌 Example:
- A beauty brand registers “GlowBeauty”.
- A competitor challenges it, claiming prior rights.
- The owner defends their trademark and proves distinctiveness.
- INPI decides to maintain the “GlowBeauty” trademark.
🚨 Lesson: A well-prepared defense can protect your brand from cancellation.
4. How to Defend Your Trademark in a Nullity Process
🚨 If your trademark is challenged, taking immediate action is critical.
✅ Step 1: Gather Evidence of Trademark Use
- Show proof that your brand is active in the market (advertising, invoices, website, social media, etc.).
✅ Step 2: Prove Consumer Recognition
- If your trademark has gained recognition, provide customer testimonials, sales data, or market studies.
✅ Step 3: Demonstrate Differences from the Challenging Brand
- Highlight differences in logo, pronunciation, product category, or target audience.
✅ Step 4: Work With a Trademark Lawyer
- A legal expert can strengthen your defense and increase your chances of winning.
📌 Example:
- A tech company registers “CloudX”, but another brand claims it conflicts with “CloudTech”.
- The “CloudX” owner presents a detailed defense, proving that their brand targets a different market.
- INPI rejects the nullity request, allowing “CloudX” to keep the trademark.
🚨 Lesson: A strong legal strategy is key to protecting a trademark from cancellation.
5. What If My Trademark Is Canceled? Can I Reapply?
🚨 If INPI cancels your trademark, you still have options:
✅ 1. File a Lawsuit in Federal Court – If you disagree with INPI’s decision, you can challenge it in court.
✅ 2. Modify and Reapply for Registration – Change your brand name slightly to make it more distinctive.
✅ 3. Request Trademark Cancellation (Caducidade) Against the Challenging Brand – If the opposing trademark hasn’t been used for over 5 years, you can file a request to cancel it.
📌 Example:
- A brand called “EcoVida” is canceled due to a conflict with “EcoLife”.
- The owner rebrands as “EcoVida Brasil” and successfully registers the new name.
🚨 Lesson: Losing a trademark battle doesn’t mean giving up—you can adjust and fight back.
6. Common Mistakes to Avoid
❌ Ignoring the Nullity Request – Not responding to INPI automatically weakens your case.
❌ Failing to Provide Strong Evidence – Weak documentation reduces your chances of winning.
❌ Assuming a Registered Trademark Is 100% Safe – Even after approval, trademarks can still be challenged.
❌ Not Monitoring the RPI Journal – If you don’t check the Revista da Propriedade Industrial, you may miss deadlines.
📌 Tip: Active monitoring and quick legal action improve your chances of protecting your brand.
Conclusion
A trademark registration is not invincible—if a third party challenges it, you must be ready to defend your rights.
✅ Understand why trademarks are challenged.
✅ Gather strong evidence and legal arguments.
✅ Act fast—missing deadlines can result in losing your brand.
✅ If canceled, explore reapplication or legal action.
As the saying goes, “A well-defended trademark is a protected trademark.” By being proactive, businesses can secure their brand and prevent competitors from taking advantage.
