The importance of protecting domestic trademarks abroad as a business strategy

by Rodrigo Borges Carneiro

September 18, 2019


Local companies are waking up to the fact that a strong brand makes it possible to build a loyal customer base and develop goodwill that can generate huge advantages in gaining market share.

A famous trademark is a powerful symbol that can concisely convey to consumers a series of values and experiences that a company wants to link to their products thus maximising spending on advertising.

Upon realising the value of a trademark, it is important to take the second step and recognise that the strength of a well-known brand goes beyond borders and requires proper protection.

It is a fact that market expansion not only in Brazil, but also abroad, is a goal pursued by small, medium and large companies.

However, in the process of expanding to other markets, the primary concerns of local companies have been related to conducting research into the desired markets and the barriers, international certifications and norms for exporting the products to the countries of interest, as well as the exportation process itself.

Often, local companies will only be concerned with the protection of the mark in Brazil and sometimes they will simply allow a product or service to appear abroad with the trademark of the third party that is responsible for the importation or the commercialization of the product or service abroad.

Upon letting the importer use a different trademark, domestic companies are missing out on an excellent opportunity to gain clientele and expand the value of their brand.

In addition, it may be easier for the importer to switch suppliers if he has control over the brand. Worse still, if a domestic company, through negligence or ignorance, allows the importer to register an identical trademark in the destination country for the products, it may later face a lengthy and costly legal battle to have the right to use the trademark if the relationship with the local importer comes to an end.

Also, cases of famous domestic trademarks being registered abroad by third parties that are paying attention to what happens in Brazil are not uncommon. Delay in registering internationally in these cases can be costly.

In view of this scenario, Brazilian companies should no longer neglect to protect its trademarks abroad.

The first piece of advice local companies should keep in mind is that the registration, which is carried out in Brazil at the Brazilian Patent and Trademark Office – BPTO [National Institute of Industrial Property – INPI], allows its titleholder to acquire ownership of the trademark nationally and to be able to make use of a series of legal measures to prevent competitors from using identical or similar trademarks to identify related goods or services.

On this issue, with Brazil’s recent accession to the Madrid Protocol, domestic companies have gained an important tool to protect their trademarks internationally based on the application filed at the BPTO. The Madrid Protocol allows the application filed at the BPTO to be forwarded to the World Intellectual Property Organisation (WIPO) and to serve as the basis for obtaining trademark registrations in more than 100 countries in a simpler and cheaper manner. In addition, the Protocol also facilitates the administration of an international portfolio of trademarks by unifying renewal terms and recording changes of title.

An international trademark registration program should be carried out with the assistance of an experienced professional, preferably an industrial property agent or lawyer with experience in this area, who is able to make competent use of the various available options, either by filing trademarks directly with the Intellectual Property offices in the individual countries when it is strategically most advantageous to do so, or by using the resources of international agreements such as the Madrid Protocol.

There is a world of opportunities awaiting local companies seeking to protect and extend the reputation of their trademarks abroad be one of the pioneers and reap the fruits of this option.


Rodrigo Borges Carneiro

Advogado, Agente da Propriedade Industrial

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