Exploring the Concept of a Trademark and the Corresponding Rights

Do you know all the rights and obligations related to trademarks and their registration? In commercial transactions, trademarks play a crucial role, identifying products and services and setting them apart from consumers.

What is a trademark?

According to the INPI (National Institute of Industrial Property), a federal authority linked to the Ministry of Economy, which has the task of protecting industrial property, "a trademark is any distinctive sign, visually perceptible, that identifies and distinguishes products and services, as well as certifying their conformity with certain standards or technical specifications". In other words, we can say that a trademark is a figurative representation of a product or service, i.e. anything that refers to something saleable, whether tangible or intangible.

A trademark is divided into four categories: word, figurative, mixed and three-dimensional. The word mark refers to its nominal expression, i.e. its name. The figurative brand is related to visual components, such as the logo (graphic representation of a brand, an element that is naturally associated with the entity), application icon or mascot, for example. The mixed brand, on the other hand, combines the two elements mentioned above, i.e. it is a union between the text and the image that evoke the brand. Finally, three-dimensional branding refers to the plastic form of a particular brand, the physical aspect of the product, for example - as in the shape of the Coca-Cola bottle or the packaging of Toblerone chocolate.

They are unique, and these characteristics are part of the brand.

Trademark rights:

In the legal concept, a trademark is not a symbol that represents an organization, company or business, but the relationship between products and services and a certain entity, differentiating them from other similar ones. This is why, in order to protect its particularities, a trademark must be registered. This prevents competitors from acting unfairly, using means to confuse the consumer by creating a similar symbolism and taking advantage of the added value of another brand

Trademark rights derive from its registration with the National Institute of Industrial Property (INPI). This registration gives the owner exclusive use of the trademark throughout the country.

Duration and Renewal of Registration:

Trademark registration in Brazil is valid for 10 years from the date the registration is granted. After this period, the trademark must be renewed in order to restore the protection and exclusive rights of the owner. It can be extended for equal and successive periods (10 years).

According to art. 129 of the Industrial Property Law (LPI) - Law 9.279/96, "ownership of the trademark is acquired by validly issued registration, and the owner is assured exclusive use of the registered sign throughout the national territory."

The extension must be requested during the last year of validity, upon payment of the corresponding fees and charges.

Assignment and Licensing:

The trademark owner may assign its registration to third parties, provided that the assignee meets the legal requirements. The assignment must cover all registrations or applications related to the same trademark, avoiding cancellations or partial filings, and can be formalized by means of a contractual instrument.

Assignment is a definitive transfer of copyright, allowing the assignee to exploit the work in whole or in part. The assignment contract must be written and signed by the parties involved, clearly setting out the terms of the agreement. There is no set time limit for the assignment, unless specified in the contract. It can be total, when all the rights are transferred, or partial, when only part is assigned. It can be universal, allowing exploitation in any medium, or singular, restricting exploitation to specific media.

In addition, the trademark owner can grant licenses of use to third parties, provided they maintain control over the quality of the goods or services related to the trademark. The licensee may be authorized to act in defense of the trademark, as stipulated in the contract.

Licensing is a temporary, non-exclusive authorization to use the work, granted by the copyright holder to the licensee. The license agreement must be in writing and set out the conditions for the use of the work, including term, remuneration and methods of use. Licensing can be total, allowing full exploitation of the work, or partial, restricting use to certain parts. It can be exclusive, granting the licensee exclusive use of the work, or non-exclusive, allowing the owner to grant licenses to others. The copyright holder retains control over the work and can revoke the license at any time.

In assignment, the copyright is transferred permanently, while in licensing, only a temporary authorization is granted. In assignment, the assignee becomes the new owner of the copyright, while in licensing, the owner retains control over the work. Licensing may be more advantageous when you want to maintain control over the work and obtain long-term royalties, while assignment may be more suitable for a definitive sale of rights.

Termination of Registration:

Trademark registration can be terminated for a variety of reasons, including expiry of the term, resignation of the owner or forfeiture. Failure to comply with legal obligations, such as maintaining an attorney in the country, can also lead to the loss of rights.

This so-called extinction means the loss of all rights hitherto guaranteed, as the certificate issued by the INPI is no longer valid. According to article 142 of the Industrial Property Law, there are 4 factors that can lead to the termination of registration.

1. By expiry of the term of validity: The trademark registration is valid for 10 years and can be extended upon request during the ninth year of validity.

2. Total or partial waiver: The owner of the registration can waive their rights to the trademark, totally or partially, by applying to the INPI.

3. Forfeiture: If it is proven that the trademark has not been used in the last 5 years, or if its use has been interrupted, the registration can be terminated.

4. In the absence of an attorney for a foreign owner: The owner of a trademark domiciled abroad must appoint an attorney domiciled in Brazil, and the absence of such an attorney can lead to the registration being extinguished.

In addition to these factors, the registration can be terminated if the entity responsible for the collective or certification mark ceases to exist, if the mark is used in a different way than intended, or if a court decision orders its annulment.

Legal Protection and Nullity of Registration:

It is important to point out that a registration that contravenes legal provisions can be declared null and void through legal action. The nullity process can be initiated by the INPI or by any person with a legitimate interest, within the period established by law.

Therefore, formalizing the royalties to be paid for the use of the trademark is essential to guarantee the protection of the owner's rights and security in commercial relations. Be aware of the legal procedures and make sure you comply with the legislation in force.

Contact our team at Piva Advogados for more information.