Areas of expertise
Trademarks
To register a trademark is to protect the company’s largest assets, especially in periods of crisis when unfair competitive attitudes increase. It is essential to carry out a critical technical analysis about the register feasibility, to avoid future harms and to count on a permanent surveillance system.
When should I request a trademark application?
When you decide to start your own business, open a company, launch products, services or projects that will be represented by names or trademarks.
The first step is carrying out a technical research (search). In the analysis, you should verify the register feasibility on legal requirements, since the interested parties often wish to acquire trademarks containing symbols, figures or names forbidden by law, or even believe that they are not allowed to use certain name, when they actually are.
After analyzing the requirements, you should carry out a research of the former databases of the trademark institutes of the country(ies) or territory(ies) where the protection is desired (e.g.: as INPI in Brazil). To support the analyzes, there are modern tools with parameters providing the guidance on feasibility or not. The bases are the Law, the Opinion of the Jurists and the prior decisions, and the expert’s performance is decisive for a reliable result.
We recommend that a trademark application – or even a use application – is never carried out without the due prior study, because you can have surprises later, after investing more time and money in the website, publicity, logo, facade, etc.
What are the current types of trademark register?
Nominative, figurative, mixed and three-dimensional trademarks.
There are four manners to carry out the trademark application: nominative, figurative, mixed and three-dimensional trademarks. Since many clients have questions about such protection possibilities, we will try to simplify them. Firstly, be aware that a presentation shape does not exclude any other format, that is, it is possible to establish a strategy to protect a trademark in the several aspects that it is presented. For purposes of exemplification, consider the famous chocolate trademark: Toblerone, because in that trademark it is possible to identify the 4 graphic formats mentioned.
The nominative shape is that protecting exclusively the name (e.g.: TOBLERONE). Therefore, no image is placed in the register; only the name is written. However, such name may express a singular graphic format (a specific type of typeface, color, shadow), and, at the same time, figurative elements may appear, such as drawings, lines, circles, etc. In such configuration, we already have a mixed shape of trademark, resulting in a name with a unique graphic presentation. In our example, TOBLERONE trademark would be colored in blue and red with golden outlines, a yellow background and a mountain next to it.
There is also the figurative trademark, which purpose is registering a drawing that works as a trademark. In the case of TOBLERONE trademark, the mountain figure could be protected in that format. Mercedes-Benz star is also a good example of this type of trademark, that is, any person knows that such symbol represents a specific automobile industry.
The last shape is the three-dimensional shape, that is, the format of a product. TOBLERONE’s case is paradigmatic, because any other chocolate is traded in the triangle shape imitating a mountain. Thus, that trademark is also associated with the product format, and, therefore, if we remove all signs denoting the trademark and the chocolate, TOBLERONE still can be identified by its shape. The three-dimension trademark register occurs because of that.
Necessity to think about the trade name, domain and trademark together.
Currently, before the market competition, all companies need, since the start of their operation, enhance the appearance on internet and social media. In addition, with the quantity and diversity of competitors, the distinguishing factor and uniqueness is increasingly important for binding clients to products and services; Therefore, choosing a strong name and a remarkable logo to incorporate and represent that company in the market is essential. However, choosing a name is not enough to start. The entrepreneur and businessman need to stark to look at the horizon and plan his/her performance. If his/her presence in the digital mean is essential, he/she needs to verify the availability of the name chosen in social media and domain name.
Additionally, the legal study of that name is needed to use it as a trademark, that is, a research with an opinion about the register feasibility with the National Institute of Industrial Property. It is also interesting making a research about the trade name, since it is possible, especially through the Courts, to “fight” for a name based on the former or older trade name. All these precautions are clear if the case is submitted to intellectual property litigation, since it must resolve the problems when a good management of the company’s intangible rights has not been carried out.
What does it mean Class Division – Multiclass System?
According to the Brazilian law, a trademark is all distinguished, visually perceptible signs that identify and distinguish products and/or services. Thus, a request to apply for the trademark register is that the owner identifies in the form the products and/or services to be marked by it.
Nowadays, INPI adopts a classification system divided into products (listed in classes from 1 to 34) and services (listed in classes from 35 to 45). Note that the classes and lists available by INPI are not exhaustive, that is, they do not include all types of products and services existent in the market.
Furthermore, the request for a trademark application will be available through multiclass system soon. In other words, it will be possible to require the trademark of a process in more than a class. However, the multiclass system should be adopted by the owner with caution because it has several details that might even harm him/her during the process. Each case should be strictly studied before filing the request, also because the values of the rates payable by additional class will not change.
Understand Ownership and Joint Ownership.
According to Law 9.279/96, article 128, individuals or public or private legal entities may be owners of trademarks. The legal condition is that the owners show an evidence that their business are compatible with the products and/or services market in the trademark and, if they are represented by an attorney, they shall submit the proper power of attorney with powers to service of process, in the event of foreigner applicants.
However, we have news: INPI will accept the joint ownership in trademark processes soon. That means that it will be possible that a trademark process has more than a owner. The joint owners will be obligated to comply with the same conditions established by law, to evidence a compatible business and to submit the proper power of attorney in the event they are represented by an attorney. However, there are other details, such as events of trademark assignments, partial assignments, etc.
The relation between a trademark application and the practical activity.
Article 128 of Law 9.279/96 determines that private entities may only request trademarks in business actually and legally practiced by them, directly or through companies directly or indirectly controlled by them.
INPI accepts as a business evidence the articles of organization/articles of incorporation or a statement signed under penalty of law. In the event of companies owned by the same economic group, the Opinion INPI/PROC/DIRAD No. 12/2008 establishes that the coexistence of trademarks is possible without the prior authorization of the owner of the former register. Note that the relation between an economic group and companies shall be evidenced through the proper documentation, such as the organizational documents of the companies, articles of organization, including the amendments and restatements thereof, articles of incorporation and minutes of shareholder’s meetings. The business statement is also needed in the events of assignment, when the assignor shall evidence that his/her business is compatible with the products and/or services of the trademark to be assigned.
