Brazil: Performing trademark clearance searches without experts can lead to problems
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking 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


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.


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

more from across site and ros bottom lb

More from across our site

Meet the esteemed judges who are assessing the first-ever Social Impact Awards
Lawyers debate whether the Supreme Court’s ruling helps maintain confidence in the trademark system
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
The group of lawyers, which includes seven IP partners, say they were impressed by ArentFox Schiff's wide-reaching experience
Andy Sherman, general counsel at Dolby Laboratories, says the company will continue to make GE Licensing’s patents available through existing pools
CMS, which represents Nestlé, had been told to respond to a cancellation action by February 12 but filed its response a day later
Keith Bergelt, CEO of the Open Invention Network, explains why AI technologies were not part of an update to its cross-licensing project
Kirkland & Ellis partners explain how they secured the dismissal of a patent case in which the other side had lied under oath
Managing IP understands the association had been considering other options, including Madrid or Vienna, after concerns were raised over Dubai’s positions on various rights
Chris Marando tells Managing IP that he's excited to work on PTAB matters at Perkins Coie, which recently hired another lawyer from his former firm
Gift this article