Month: April 2026

The Brazilian Patent and Trademark Office (BPTO) has recently announced two trademark-related changes that are particularly relevant to foreign applicants and international practitioners.

 

The first concerns amendments to the priority examination framework for trademarks, introduced by BPTO Ordinances No. 28 and 29/2025, which came into effect this April. Among the new modalities, the updated rules now encompass situations related to the Madrid Protocol, as well as cases in which expedited examination may be requested based on reciprocity between Brazil and another jurisdiction. For applicants managing multi-jurisdictional portfolios – where delays in Brazil may impact enforcement, licensing timelines or broader protection strategies – this development creates a cleared and more structed pathway to accelerated prosecution.

 

The second update is the BPTO’s adoption of WIPO’s e-Filing platform for the certification of international trademark applications under the Madrid System, effective as of April 13. This tool, already implemented by 39 intellectual property offices worldwide, introduces tangible operational improvements in the forms and data import from the BPTO’s database.

 

On priority examination: the evidentiary question

The expansion of the priority examination framework is a welcome development, particularly for foreign applicants whose trademark strategies rely on coordinated timing across jurisdictions. The inclusion of Madrid Protocol-related scenarios and reciprocity-based requests reflects a more flexible and internationally aligned approach by the BPTO – one that better accommodates the realities of global brand management.

 

That said, the mere availability of the mechanism is only part of the equation. Whether a priority request is granted will still depend on the quality and robustness of the supporting evidence. This is a key point that should be considered from the outset.

 

 

The issue becomes particularly relevant when urgency is linked to e-commerce platforms and brand protection programs. In practice, many clients seek expedited examination in Brazil because platforms such as Mercado Livre, Shopee and Amazon often place significant weight on the existence of a granted trademark registration when assessing takedown requests and enforcement measures. This concern is both legitimate and commercially grounded.

 

The problem is that what is typically available at this stage are the general rules or eligibility policies published by these platforms. While these documents may indicate that a granted registration is required or preferred,  they do not show how the issue has materialized in a specific case. What would generally strengthen a priority request is a more specific and individualized piece of evidence: for example, proof that a particular enforcement request was denied, limited or suspended due to the absence of a granted Brazilian registration. Without such evidence, the argument risks being viewed as commercially plausible but not concretely demonstrated — and before the BPTO, that distinction tends to matter.

 

On WIPO e-Filing: a practical improvement

The adoption of WIPO e-Filing for Madrid System certifications is a more straightforward development, but one that will be felt in day-to-day practice. Practitioners handling international filings involving Brazil are well aware that procedural inefficiencies at the Office of Origin stage – such as incomplete forms, classification inconsistencies, or delays in certification – can lead to avoidable complications downstream. The new platform directly addresses these issues.

 

For foreign associates and applicants coordinating filings that designate or originate in Brazil, this change is expected to streamline workflows in ways that, while incremental individually, are collective significant in practice.

 

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Advogado(a) autor(a) do comentário: Natalia Eleutério Garcia Gazote, Lígia Ferreira Marcondes Rocha e Cesar Peduti Filho, Peduti Advogados

Sources: INPI apresenta mudanças em marcas e avanços em desenhos industriais em encontro com usuários

https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/inpi-apresenta-mudancas-em-marcas-e-avancos-em-desenhos-industriais-em-encontro-com-usuarios

INPI adota e-Filing da OMPI para certificação de pedidos internacionais de marcas

https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/inpi-adota-e-filing-da-ompi-para-certificacao-de-pedidos-internacionais-de-marcas

 

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If you would like to learn more about this topic, please contact the authors or the Managing Partner, Dr. Cesar Peduti Filho.

The Brazilian Superior Court of Justice has issued a significant decision recognizing that Red Bull’s trademark rights were infringed by the registration of the “Power Bull”. The Court concluded that the signs cannot coexist, as they are likely to mislead consumers.

 

Red Bull is a globally recognized brand in the energy drink market, widely associated with the sponsorship of major sporting events. As a well-known trademark, it enjoys special protection under trademark law. Power Bull, in turn, is a brand owned by a Brazilian company also used in connection with energy drinks.

 

It is worth noting that the first instance court found that the term “bull” referred to taurine, the main ingredient of the beverage, as the word translates to “touro” (bull) in Portuguese. The court also considered the overall trademark composition to be sufficiently distinct to allow coexistence.

 

However, in appealing the decision, Red Bull argued that the term “bull” cannot be considered generic, as it is not commonly used to identify energy drinks.

 

 

Tthe Brazilian Superior Court of Justice agreed with this reasoning, invalidating the registration of the “Power Bull” mark and upholding the decision in favor of Red Bull.

 

It is worth noting that Brazilian trademark law provides clear guidance on signs that are not eligible for registration, as set forth in Article 124 of the Industrial Property Law (Law No. 9,279/96). In this case, item XIX is particularly relevant, as it establishes that trademarks reproducing or imitating, in whole or in part, a third party’s mark in a manner likely to cause confusion or association are not registrable. 

 

The court’s well-reasoned decision stands as a strong example of the proper application of Brazilian trademark law to safeguard the rights of trademark owners.

 

Moreover, the proactive approach taken by Red Bull illustrates the importance of timely and strategic enforcement. For trademark owners, effectively protecting their rights often depends on acting early and relying on experienced legal counsel to navigate the complexities of the Brazilian System.

 

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Authors: Daniela Russo. Lígia Ferreira Marcondes Rocha and Cesar Peduti Filho, Peduti Advogados.

Source: https://www.migalhas.com.br/quentes/441437/stj-mantem-nulidade-de-marca-power-bull-em-disputa-com-red-bull

 

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“If you want to learn more about this topic, contact the authors or the Managing Partner, Dr. Cesar Peduti Filho.”