Trademark

4 Reasons Your Trademark Registration Could Be Denied

01 Mar 2017
trademark registration

Although registering your trademark is a relatively inexpensive in most of the South American countries, especially if performed online, the registration procedure generally takes several months to be concluded – approximately 18 months in Argentina and from 24 to 36 months in Brazil.

Here are the most common reasons why a trademark registration could be denied.

1. The mark your company is registering is identical or similar to another one which has already been registered for distinguishing the same products or services. Relative grounds for refusal are the most common reason why a mark is usually denied registration: the system wants to avoid any case of confusion with a prior registered trademark that is likely to mislead the consumers. For this reason, it is very important to perform a careful research of the INPI database, which contains all the trademarks registered or applied for in the country. It is to be noted that, both in Argentina and Brazil the INPI itself can deny registration to similar earlier trademark, whereas in Europe only the owner of the trademark can oppose the registration of a sign that may lead to confusion. In other words, the INPI can proceed ex officio.

2. When evaluating whether a mark can be registered, absolute grounds must also be considered. Both the Brazilian and Argentinian systems deny registration to marks which are merely descriptive or generic or represent an advertising slogan . (Argentinean legislation does not deny the registration of advertising slogans. Art. 1 TM Law No. 22.362) Sometimes it’s difficult to assess what constitutes a description or an advertising slogan in a certain country, that’s why local knowledge of the culture and the system is essential: a trademark may be perfectly registrable in the United States or in Europe but may be rejected in Argentina or Brazil.

3. You may also be denied registration if your mark is against the public moral or offends the honor of people. In particular, the Argentinian system denies protection to “words, drawings and other signs contrary to public order and to accepted principles of morality”, whereas, the Brazilian law considers unregistrable those “signs contrary to moral and good customary standards or which offend the honor and the image of people”. Also in this case, when registering a word mark, it is important to consider that words which have a certain meaning in English or in another language, may sound profane or offensive in Spanish or Portuguese.

4. You will be very likely denied registration if your trademark consists of names, acronyms, flags, emblems, monuments, medals or symbols of states, nations, regions, governmental entities or international organizations. Similarly, the registration of marks which consists of a person’s name, nickname or portrait is likely to be denied unless there is no* consent of the owner or their successors. For instance, the Brazilian PTO requested the consent of the person whose name was used by the company as a trademark, even if they are no longer involved in the company.




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