Introduction

A trademark is one of the most valuable assets a business can have. It represents your brand’s identity, distinguishing your products or services from competitors. In Brazil, the National Institute of Industrial Property (INPI – Instituto Nacional da Propriedade Industrial) is responsible for trademark registration. Securing a trademark through INPI provides exclusive rights, legal protection, and competitive advantages. This article provides a detailed step-by-step guide on how to register a trademark with INPI, from preliminary searches to final approval.

Understanding Trademarks and Their Importance

A trademark can be a word, phrase, logo, symbol, design, or combination of these elements that identifies and differentiates a brand. Registering a trademark ensures:

• Legal Ownership: Exclusive rights to use the brand in Brazil.
• Market Differentiation: Protects against competitors using similar names or logos.
• Business Growth: Increases brand value and credibility.
• Legal Recourse: Provides grounds for legal action against unauthorized use.

Step 1: Conducting a Preliminary Trademark Search

Before applying, it’s essential to check whether your desired trademark is available.

• Why Perform a Trademark Search?
  • Avoids conflicts with existing trademarks.
  • Reduces the risk of rejection by INPI.
  • Saves time and money by preventing application for an unavailable name.
• How to Conduct a Search?
  • Visit the INPI website (www.gov.br/inpi/pt-br).
  • Use the Marca Search Tool to check for similar existing trademarks.
  • Analyze identical or similar names in the same business category.
  • If the trademark is available, proceed with registration.

Step 2: Understanding Trademark Classifications

Trademarks are classified into Nice Classification (NCL) categories, which define the scope of protection.

• Main Classes:
  • Products (Classes 1-34): Items such as clothing, electronics, and food.
  • Services (Classes 35-45): Business activities like marketing, legal services, and healthcare.
• Choosing the Right Class:
  • A trademark must be registered under the correct class based on business activities.
  • If your business operates in multiple industries, registering under multiple classes may be necessary.

Step 3: Creating an INPI Account

To submit a trademark application, you need an INPI account.

• Steps to Register:
  • Visit the INPI e-INPI portal.
  • Click on “Create an Account”.
  • Provide Personal or Business Information.
  • Confirm your email and complete registration.
• Who Can Apply?
  • Individuals, small businesses, large corporations, and legal entities.

Step 4: Preparing the Trademark Application

To successfully file for a trademark, you must provide:

• Applicant Information: Name, address, and identification details.
• Trademark Details:
  • Type: Wordmark, Figurative (Logo), or Combined (Logo + Name).
  • Description of how the trademark will be used.
• Trademark Classification: The appropriate Nice Classification class.
• Power of Attorney (if necessary): If using an agent or attorney.

Step 5: Paying the INPI Application Fees

Trademark registration involves government fees. Payment varies based on:

• Applicant Type:
  • Individuals, Small Businesses (MEI, Small Companies): Lower Fees (~BRL 355).
  • Large Businesses: Higher Fees (~BRL 1,415).
• Payment Process:
  • Generate a GRU (Guia de Recolhimento da União) payment slip on the INPI website.
  • Pay via online banking or at authorized banks.
  • Keep proof of payment for future reference.

Step 6: Submitting the Trademark Application

Once payment is confirmed:

• Log into INPI’s System.
• Upload Application Documents.
• Confirm Submission and receive an official protocol number.
• Track Application Progress via the INPI portal.

Step 7: Publication in the INPI Gazette

After submission, INPI publishes the application in the Official Gazette (Revista da Propriedade Industrial – RPI).

• Why is this important?
  • Allows third parties to review your application.
  • Competitors can file oppositions within 60 days if they believe the trademark conflicts with theirs.

Step 8: Responding to Oppositions (If Any)

If someone opposes your application:

• Review the Opposition Justification.
• File a Counterargument with legal justification within 60 days.
• Provide Evidence to support your right to the trademark.
• INPI Will Analyze Both Arguments before making a decision.

Step 9: INPI Examination and Final Decision

• If No Opposition Exists:
  • INPI will conduct a formal examination.
  • Checks for compliance with legal and regulatory requirements.
  • If no issues are found, the application is approved.
• If Opposition Exists:
  • INPI reviews the case and decides whether to reject or grant the trademark.
  • The decision is published in the Official Gazette.

Step 10: Trademark Registration and Certificate Issuance

Once approved:

• Final Registration Fee Must Be Paid (around BRL 298 for individuals/small businesses, BRL 745 for others).
• INPI Issues the Registration Certificate.
• Trademark Validity:
  • The trademark is valid for 10 years.
  • Renewal is required before expiration to maintain rights.

Step 11: Trademark Renewal and Maintenance

To keep the trademark active:

• Renew Every 10 Years.
• Monitor for Potential Infringements and take legal action if needed.
• Keep Contact Information Updated with INPI to receive renewal reminders.

Common Mistakes to Avoid

1. Not Performing a Prior Search: Increases the risk of application rejection.
2. Selecting the Wrong Class: Leads to inadequate protection.
3. Delaying the Application: Someone else may register a similar trademark first.
4. Failing to Respond to Oppositions: Can result in loss of application rights.
5. Missing Renewal Deadlines: Causes loss of ownership.

Conclusion

Registering a trademark with INPI is essential for protecting your brand and securing exclusive rights in Brazil. The process involves preliminary searches, classification selection, application submission, fee payments, and responding to potential oppositions. Although it takes time, securing a trademark ensures long-term business protection, legal security, and brand credibility. By following this guide, businesses and individuals can successfully navigate the trademark registration process and safeguard their intellectual property effectively.