In the globalized trade scenario, trademark protection is a strategic priority for companies that wish to maintain their competitiveness and market integrity. However, in Brazil, many foreign companies, especially Chinese ones, have faced a recurring problem: the fraudulent registration of their brands by third parties, also known as trademark registration in bad faith. This phenomenon can generate huge losses, and understanding how to combat it is essential for companies and intellectual property offices that operate globally.
The Problem of Bad Faith Trademark Registration in Brazil
The practice of registration in bad faith occurs when individuals or companies, without a legitimate relationship with the brand, request the registration of an existing third-party brand with the aim of preventing the operation of legitimate competitors. Often, these requests are made to create obstacles to the marketing of products by distributors or resellers of the original brand in Brazil, harming free competition.
e-commerce platforms, such as Amazon, Shopee and Mercado Livre, allow the trademark owner to report and remove advertisements from competitors that improperly use an already registered trademark. Malicious individuals take advantage of this loophole to register the trademark in Brazil, even if the original owner has no connection with the local registration. With this, they can prevent other resellers or distributors from using the trademark in their commercial activities, in addition to reporting and preventing the use of the trademark by other resellers and distributors, resulting in a form of unfair competition.
This problem is particularly common in the case of Chinese companies, which, in many cases, do not have their trademark registered in Brazil or are not even aware that third parties have registered it. Failure to follow up can lead to significant losses, since Brazilian legislation establishes limited deadlines to dispute or cancel fraudulent registrations.
What Brazilian law says
The Brazilian Industrial Property Law (Law No. 9276/96) expressly prohibits the registration of a trademark that the applicant could clearly not be unaware of due to his/her activity, whose owner is based in Brazil or in a foreign country with which Brazil has an agreement or ensures reciprocal treatment.
However, although the prohibition is expressly stated in Brazilian law, taking action to prevent registration or cancel it, once it has already been registered, depends on the actual owner of the trademark, and there is no scope for any type of ex officio action by the INPI or any other Brazilian regulatory body. Therefore, taking action against this type of fraudulent registration is the responsibility of its actual owner.
Deadlines and Procedures for Cancelling Trademarks Due to Bad Faith
Brazilian legislation provides mechanisms to challenge registrations made in bad faith, but these procedures must be adopted within specific deadlines.
- Registration request in progress: During the registration process, it is possible to submit a objection to the trademark application within the period of 60 days from the publication of the application in the INPI Industrial Property Journal.
- Registration already granted: If the trademark has already been registered, the legitimate owner or his representatives may request the administrative cancellation at INPI (National Institute of Industrial Property) within the period of 180 days after the registration has been granted, through the initiation of an Administrative Nullity Proceeding. After this period, cancellation can only be requested through judicial means, with a limit of 5 years for the start of the action.
- Trademark Adjudication Action: In cases of bad faith, Brazilian law also guarantees that the true owner of the trademark files a lawsuit award action, aiming not to cancel the registration, but to transfer ownership of the trademark to its legitimate owner. This prerogative is based on the Paris Convention and is restricted to those who are headquartered in countries that are signatories to this treaty.
It is important to highlight that the passage of more than 5 years since the trademark registration, even if carried out in bad faith, can make the cancellation of the registration extremely challenging or even impossible, which creates the need for swift action.
Different approaches for each case
The measures to be adopted in cases of trademark registrations in bad faith are varied and require a strategic approach in each case, not always depending on extreme measures, such as legal proceedings. Often, the expertise of professionals capable of dealing with this type of situation can allow the issue to be resolved even out of court.
Another point to consider is the characteristics of the trademark submitted for registration, whether it is mixed or nominative, and in which classes it is registered. This analysis is crucial, since proof of bad faith in the registration is essential and crucial in this type of case, and there is no room for mere assertions of bad faith based on evidence. Bad faith is not presumed under Brazilian law and must be categorically proven.
Conclusion
O trademark registration in bad faith in Brazil is a reality that can negatively impact foreign companies, particularly those that do not adequately monitor their intellectual property rights in the country. Brazil is currently one of the largest global markets, with an intense and growing commercialization of foreign products, which creates the need for special attention on the part of these companies, so that they also seek to register their brands in Brazil. Delay or negligence in taking care of this aspect can cause financial losses and even loss of the possibility of operating with the brand in Brazilian territory. However, with the right strategy and the support of a law firm specializing in intellectual property, it is possible to adopt effective measures to protect brands and combat fraudulent practices.
Nascimento Melo Intellectual Property Law Firm is available to offer full support in these matters, whether in trademark registration, defense against undue registrations or in the search for customized solutions for each case. Contact us for more information and to ensure the protection of your trademark in Brazil.
