Brazil: Performing trademark clearance searches without experts can lead to problems
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Brazil: Performing trademark clearance searches without experts can lead to problems

Sponsored by

daniel-400px.png

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.

helayel.jpg

Livia Helayel


Daniel Legal & IP Strategy

Av. República do Chile, 230, 3rd Floor

Centro, Rio de Janeiro 

20031-170, Brazil

Tel: +55 21 2102 4212

www.daniel-ip.com

more from across site and ros bottom lb

More from across our site

External counsel for automotive companies explain how trends such as AI and vehicle connectivity are affecting their practices and reveal what their clients are prioritising
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
The winners of the awards will be revealed at a gala dinner in New York City on April 25
Counsel debate the potential outcome of SCOTUS’s latest copyright case after justices questioned whether they should dismiss it
Each week Managing IP speaks to a different IP lawyer about their life and career
The small Düsseldorf firm is making a big impact in the UPC. Founding partner Christof Augenstein explains why
The court criticised Oppo’s attempts to delay proceedings and imposed a penalty, adding that the Chinese company may need to pay more if the trial isn’t concluded this year
Miguel Hernandez explains how he secured victory for baby care company Naterra in his first oral argument before the Federal Circuit
The UPC judges are wrong – restricting access to court documents, and making parties appoint a lawyer only to have a chance of seeing them, is madness
The group, which includes the Volkswagen, Seat and Audi brands, is now licensed to use SEPs owned by more than 60 patent owners
Gift this article