Melhores Advogados de Marca registrada em São Paulo

1. About Marca registrada Law in São Paulo, Brasil

Trademark law in Brazil is federal, not city or state specific. In practice, São Paulo residents seek protection and enforcement through the National Institute of Industrial Property (INPI) and, when necessary, through the state judiciary in São Paulo. A registered marca registrada (brand or trademark) gives the owner exclusive use of the mark for the goods and services listed in the registration within Brazil.

A Brazilian trademark rights arise from registration with INPI and can be challenged or defended in civil litigation if another party uses a confusingly similar sign or engages in a counterfeit operation. The registration process includes clearance searching, examination by INPI, possible office actions, and eventual grant if distinctiveness and compliance are satisfied. Mark owners must maintain the registration through renewals and monitor for potential oppositions or infringements.

In São Paulo, the market is highly dynamic, with many large brands and startups seeking rapid protection as they expand across classes and regions. Practical experience shows that a clean, well-prepared registration strategy, including proper class selection and monitoring, reduces later enforcement costs and disputes. The core legal framework is national, but local enforcement and civil litigation are commonly handled in São Paulo courts when disputes arise.

Key fact: Trademark rights in Brazil are national and must be registered with INPI before taking effect nationwide.

Source: Planalto - Lei da Propriedade Industrial (Lei 9.279/1996)

2. Why You May Need a Lawyer

Here are concrete, real-world scenarios in São Paulo where a Marca registrada lawyer is essential. Each scenario reflects typical local business environments and enforcement considerations.

• Clearance and registrability for a new brand in multiple classes - A startup in Vila Madalena plans to register a name across classes 35 and 42. An attorney conducts a comprehensive clearance search, evaluates potential conflicts, and drafts a robust application strategy to minimize refusal risks by INPI.
• Responding to an INPI office action or opposition in SP - An established restaurant chain receives an INPI office action citing lack of distinctiveness. A lawyer helps redesign strategy, gather evidence of use, and respond within deadlines to preserve registration prospects.
• Enforcing rights against counterfeit sellers in São Paulo - A fashion brand discovers unauthorized sellers on marketplaces and in retail in Pinheiros. A lawyer issues cease and desist, pursues civil remedies, and coordinates with authorities if needed.
• Expanding protection to new classes or services - A tech company wants to add software-related classes after initial approval. An attorney guides the amendment process with INPI and updates monitoring plans to cover the expansion.
• Managing international expansion via Madrid Protocol - A São Paulo designer seeks protection for the same mark in Portugal and the United States. An IP lawyer coordinates with INPI and foreign offices to file international registrations efficiently.
• Handling brand conflicts during acquisitions - A SP-based retailer is acquired and the new owner must assess existing marks, rights, and potential encumbrances before closing. A lawyer analyzes scope, risk, and possible rebranding options.

3. Local Laws Overview

Brazilian trademark law relies on federal statutes and regulations, with INPI serving as the registration and examination authority. The main statutory framework is the Lei da Propriedade Industrial, complemented by implementing regulations and international treaties that Brazil has joined.

Lei da Propriedade Industrial (Industrial Property Law) governs registration, scope of protection, and enforcement for trademarks in Brazil. This law defines registrability, ownership, and infringement remedies, and it is the cornerstone for trademark strategy in São Paulo. It is published by the Brazilian government and applies nationwide.

Regulamento da Propriedade Industrial (Regulation of the Propriedade Industrial) provides procedural rules for filing, examination, oppositions, renewals, and post-registration actions. In practice, this regulation guides INPI’s workflow and the due process you will encounter when pursuing a mark in São Paulo.

Tratado de Madrid (Madrid Protocol) - Brazil joined the Madrid System to facilitate international trademark protection. This enables you to extend protection to other member countries through INPI, simplifying foreign registrations from a São Paulo base. Local enforcement remains subject to Brazilian law, and foreign protections depend on each country’s rules.

In São Paulo, civil remedies for trademark infringement are typically pursued in the state and federal courts, depending on the nature of the claim. The state Court of Justice of São Paulo (TJSP) handles many civil matters, including complex IP disputes, while INPI handles administrative actions such as oppositions and renewals. These pathways are often used together in São Paulo business disputes.

According to INPI, the primary statute governing marks in Brazil is Lei da Propriedade Industrial (Lei 9.279/1996).

Source: Planalto - Lei 9.279/1996

Brazil's participation in the Madrid Protocol began in 2019, enabling international trademark registrations via INPI for São Paulo companies.

Source: INPI

4. Frequently Asked Questions

What is the basic scope of a registered trademark in Brazil?

A registered mark protects signs used in commerce for defined goods or services within Brazil. It grants exclusive use and prohibits others from confusingly similar signs in the same classes.

How do I start a trademark application in São Paulo?

Begin with a clearance search and prepare a filing strategy. Submit the application to INPI with the requested specimens, classifications, and any translations if needed.

When will INPI examine my trademark application?

Examination follows filing and publication. Processing times vary by class and complexity, with many applications progressing over months to a year or more.

Where can I file and monitor my trademark in Brazil?

Filing and monitoring are done through INPI's online system. You can check status updates, actions, and oppositions directly on INPI's portal.

Why should I hire a trademark attorney for registration?

A lawyer helps navigate office actions, oppositions, and potential refusals. They prepare persuasive responses, manage deadlines, and coordinate with INPI to protect your rights.

Do I need to be in São Paulo to register a mark there?

No. Trademark registration is national. You can file for your mark from anywhere in Brazil, but enforcement and litigation may occur in São Paulo if your business operates there.

Can I use my mark while it is pending registration?

You may use the name in commerce, but you should avoid implying a legal right until registration is granted. A trademark attorney can advise on risk management during the pendency period.

How much does it cost to register a trademark in Brazil?

Registration costs depend on INPI tariffs and the number of classes. These tariffs are updated periodically, so consult INPI’s current fee schedule before filing.

What happens if another company opposes my mark in SP?

The opponent can file an opposition with INPI. A trademark attorney can challenge the opposition and present evidence of use and distinctiveness to preserve your application.

Is there a difference between a word mark and a logo mark?

Yes. A word mark protects the textual element, while a logo mark covers the visual design. You may seek protection for both or for a combined mark depending on your branding needs.

Do I need to renew my trademark after grant?

Yes. Trademark protection in Brazil requires renewals at set intervals. A lawyer can ensure renewals are filed on time and monitor for potential disputes.

What should I consider if I plan to expand protection internationally?

Consider Madrid Protocol filings via INPI for fast, cost-efficient international protection. A local IP attorney can coordinate filings in target jurisdictions and manage timelines.

5. Additional Resources

• INPI - National Institute of Industrial Property. Official authority for registering trademarks, monitoring oppositions, and managing renewals. Site: http://www.inpi.gov.br
• Planalto - Lei da Propriedade Industrial - Official publication of federal statutes including Law 9.279/1996. Site: http://www.planalto.gov.br/ccivil_03/leis/L9279.htm
• Ordem dos Advogados do Brasil, Seção de São Paulo (OAB SP) - Directory and resources to locate IP lawyers and understand professional standards. Site: https://www.oabsp.org.br

6. Next Steps

1. Clarify your branding strategy and the specific goods or services for which you seek protection. Write down the classes and jurisdictions you care about, especially in São Paulo.
2. Schedule consultations with at least two IP lawyers in São Paulo who specialize in trademarks. Prepare a brief about your mark, prior usage, and business plans.
3. Request written engagement proposals and fee estimates. Compare not only cost but also the proposed strategy and timeline.
4. Ask about clearance searches, potential conflicts, and how they plan to address possible INPI objections or oppositions.
5. Confirm the lawyer is registered with the local bar association (OAB SP) and has demonstrable experience with INPI filings and SP-based enforcement.
6. Prepare all necessary documents and translations ahead of filing. Ensure you have clear specimen examples and a branding description aligned with your classes.
7. Once engaged, monitor the application and respond promptly to any INPI communications or oppositions. Maintain records of renewals and enforce protections as needed.