Receiving a trademark rejection from the National Institute of Industrial Property (INPI) can be frustrating, but the process may not be over yet. Even after filing an Appeal Against Trademark Rejection (Recurso ao Indeferimento), a third party—or even INPI—might challenge your appeal. In this case, you will need to submit a Manifestação ao Recurso Contra o Indeferimento do Registro de Marca, which is your final opportunity to defend your trademark registration.
In this article, we will cover:
✔ What happens when your appeal is contested
✔ How to prepare a strong response
✔ Strategies to increase your chances of success
What Is a Manifestação ao Recurso Contra o Indeferimento?
A Manifestação ao Recurso Contra o Indeferimento is a legal response that you can file when a third party or INPI contests your Appeal Against Trademark Rejection (Recurso ao Indeferimento). This means that even after you appeal a trademark denial, someone—usually an opposing company—can try to block your registration by arguing that INPI’s initial rejection was correct.
If this happens, you have 60 days from the publication in the Revista da Propriedade Industrial (RPI) to submit your counter-arguments and strengthen your case.
Failing to respond within this period may lead to a final rejection, resulting in the loss of your trademark rights.
Why Might an Appeal Be Contested?
Even if you file a strong Recurso ao Indeferimento, a third party may contest your appeal for several reasons, including:
1. Similarity to an Existing Trademark
🔍 If your brand name, logo, or slogan is too similar to an already registered trademark, the opposing party may argue that INPI was correct in rejecting it.
📌 Example: You apply for “NeoFit”, but a company with the trademark “NeoFitness” argues that there is a risk of confusion in the market.
2. Prior Use of the Brand by Another Company
📌 A company may claim they were using the brand before your application and that they have prior rights, even if they never registered the trademark.
🚨 Example: A local coffee shop has used the name “Café Brasil” for years but never officially registered it. They argue that your registration would violate their established business identity.
3. Generic or Descriptive Terms
📌 If your brand name is too generic or descriptive, an opposing party might argue that it does not qualify for exclusive trademark rights.
🚨 Example: If you apply for “Fresh Breads” for a bakery, the opposition may claim that these words cannot be monopolized by one business.
4. Bad Faith Allegations
⚠️ If a competitor believes you are trying to register a well-known name or a brand that resembles theirs, they may contest your appeal by accusing you of acting in bad faith.
🚨 Example: If you attempt to register “StarBros” for coffee, a well-known brand like Starbucks may contest your appeal.
How to Respond to an Appeal Opposition (Manifestação ao Recurso Contra o Indeferimento)
If your appeal is contested, follow these steps to defend your trademark:
Step 1: Analyze the Opposition Arguments
✔ Review the arguments in the opposition notice published in the RPI.
✔ Identify the legal basis used to contest your appeal.
✔ Compare your brand with the opposing party’s trademark to highlight differences.
Step 2: Gather Strong Evidence
To build a solid response, collect documents that support your case:
✔ Proof of Market Use – Show invoices, contracts, advertising materials, and online presence related to your brand.
✔ Consumer Recognition – Present surveys or reviews showing that customers associate the brand with your business.
✔ Legal Arguments – Cite Brazilian trademark laws and INPI precedents to justify your registration.
✔ Phonetic and Visual Analysis – Demonstrate that your trademark is different from the opposing party’s brand.
Step 3: Draft a Strong Legal Response
Your Manifestação ao Recurso Contra o Indeferimento must:
📌 Explain why your trademark is unique and does not cause confusion.
📌 Argue that your brand is distinctive and qualifies for protection.
📌 Refute the opposition’s claims using legal and factual arguments.
Step 4: Submit Your Response to INPI
✔ Log in to e-INPI and navigate to the trademark services section.
✔ Select Manifestação ao Recurso Contra o Indeferimento and upload your defense.
✔ Pay the necessary fees and submit the response before the deadline.
📌 Estimated Fee (2025):
- Individuals/Microbusinesses: Around BRL 142
- Companies: Around BRL 355
What Happens After You File Your Response?
✅ If INPI Accepts Your Arguments
Congratulations! Your trademark application will proceed, and you may receive final approval.
❌ If INPI Rejects Your Response
If your defense is not accepted, INPI may issue a final rejection of your trademark. In this case, you have two options:
✔ File a legal action in federal court to challenge the decision.
✔ Modify your brand and submit a new trademark application.
How to Prevent Trademark Opposition in the Future?
✔ Conduct a Prior Trademark Search
- Check the INPI database before submitting your application to avoid conflicts.
✔ Choose a Distinctive Brand Name
- Avoid generic words and names similar to registered trademarks.
✔ Monitor INPI’s Trademark Publications
- Keep an eye on the Revista da Propriedade Industrial (RPI) to identify potential conflicts early.
✔ Consult a Trademark Expert
- A trademark attorney can help you strengthen your application and defend against oppositions effectively.
Conclusion: Defend Your Trademark with a Strong Legal Response
If your Appeal Against Trademark Rejection is challenged, you must act strategically and quickly to submit a well-prepared response.
📌 Analyze the opposition carefully
📌 Gather strong evidence to prove your brand’s distinctiveness
📌 Submit your defense to INPI within 60 days
By taking proactive steps, such as conducting a prior trademark search and choosing a unique brand name, you can reduce the risk of opposition and increase your chances of successful trademark registration.
