Brazil: Performing trademark clearance searches without experts can lead to problems
Performing trademark clearance searches should always be the first step taken prior to filing a trademark application, as they are an effective way of preventing legal risks before launching a brand.
A few years ago, these searches were solely performed by experts in intellectual property law, but nowadays, there are lots of search tools that are exclusively using artificial intelligence (AI) to provide less costly and expedited search results.
Although AI is here to stay, why should companies still seek local advice?
While doing business in Brazil, local knowledge is key in many situations due to the Brazilian legal system's peculiarities. This also applies to trademark clearance searches.
To better illustrate, a brand that in the same circumstances would have no problem receiving registration in the US or throughout Europe, might be rejected in Brazil either because of our PTO's contradictory decisions or based on absolute grounds. For example, if a phrase or expression makes sense in any language, there is a high chance Brazil's PTO will reject it as being descriptive or a mere slogan. Also, one of the reasons Brazil's PTO makes contradictory decisions is that its level of tolerance of coexistence varies depending on the class in which the application is filed.
All these hindrances can be avoided by simple suggestions from an expert, such as filing the mark together with a house-mark or combined with other distinctive elements.
In a connected world, companies are interested in having a unique identity globally and time is of the essence. We therefore encourage the use of AI to perform searches, as it evidently reduces costs and provides speedy results. Nonetheless, in jurisdictions with their own idiosyncrasies, using AI engines should not rule out an expert analysis, as local know-how may completely change a search report and advice from the beginning.
Daniel Legal & IP Strategy
Av. República do Chile, 230, 3rd Floor
Centro, Rio de Janeiro
Tel: +55 21 2102 4212