Bad-Faith Trademark Registration in Brazil: How to Challenge a Mark That Should Not Have Been Granted

Why This Happens: Brazil's First-to-File System

Brazil operates under a first-to-file trademark system. Rights are generally acquired through registration, not prior use, which means that a party who files first at the INPI typically prevails, even against a foreign brand that has been in use for decades abroad.

There are exceptions, including protection for well-known marks under Article 6bis of the Paris Convention and a right of precedence for good-faith prior users under Article 129 of the Industrial Property Law. But these exceptions are narrowly applied and litigated. In practice, a foreign company that delays filing in Brazil is exposed and bad-faith registrations by local opportunists, often called "trademark pirates," remain a persistent problem.

When a conflicting mark has already been registered, the path forward depends on one critical question: how long ago was the registration granted?

Route 1: Administrative Nullity Action at INPI (Within 180 Days of Grant)

If the registration was granted fewer than 180 days ago, the most direct remedy is an administrative nullity action (Pedido Administrativo de Nulidade — PAN) filed directly with the INPI.

Any party with legitimate interest can file a PAN. The registrant is notified and given 60 days to respond. After that, the INPI president issues a decision, closing the administrative phase. The INPI can also open nullity proceedings on its own initiative within the same window.

A PAN must be grounded in a legal basis, most commonly that the mark was granted in conflict with a provision of the Industrial Property Law (Law No. 9.279/1996). Typical grounds include:

• The mark reproduces or imitates a prior registered or well-known mark

• The mark lacks distinctiveness or is descriptive

• The applicant acted in bad faith, exploiting the reputation of a third party's brand

The administrative route is faster and less expensive than litigation. However, it is limited: it must be filed within 180 days of the grant, and if unsuccessful, it closes the administrative phase, leaving judicial action as the only remaining option.

Route 2: Judicial Nullity Action in Federal Court (Within 5 Years of Grant)

If more than 180 days have passed since the registration was granted — or if the PAN was unsuccessful — the next route is a judicial nullity action filed before the Federal Courts in Rio de Janeiro, where the INPI is headquartered and where the vast majority of these cases are heard.

Any party with legitimate interest can file a judicial nullity action within five years of the grant date. The INPI is a mandatory party to the proceedings. The court may also issue preliminary injunctions to suspend the effects of the registration while the case is decided — an important tool when active infringement is already occurring.

After five years have elapsed, the available grounds narrow significantly. At that point, bad faith becomes the primary — and in most cases the only — viable basis for cancellation. Brazilian courts have developed a meaningful body of case law on bad faith in trademark registration, recognizing it as a ground for nullity even when other legal arguments might be time-barred.

What "Bad Faith" Means in Practice

Bad faith in trademark registration typically involves a registrant who had knowledge of the foreign brand — through commercial dealings, prior contact, market visibility, or deliberate monitoring — and filed strategically to block, extract payment from, or benefit from the reputation of the original owner.

Evidence relevant to a bad-faith claim in Brazil includes:

• Prior contractual or commercial relationship between the registrant and the foreign brand owner

• Evidence that the foreign mark was known in Brazil or in the relevant sector before the local filing

• A pattern of similar filings targeting multiple foreign brands (a common indicator of trademark piracy)

Brazil's courts have been increasingly receptive to bad-faith arguments, and the INPI's own examination guidelines recognize bad faith as grounds for refusal and nullity. Well-known marks under Article 6bis receive special protection even without Brazilian registration, which can be a powerful additional argument.

What to Do First

Before committing to either route, a few steps are essential:

Run a full trademark search. Identify all registrations and applications in the relevant classes to understand the full scope of the problem, including whether the registrant holds related marks.

Establish a timeline. The 180-day window for the administrative route and the 5-year window for judicial nullity are hard cutoffs. Missing them forecloses options.

Gather evidence of prior use and the registrant's knowledge. For both routes — and especially for bad-faith arguments — documentation is decisive. Commercial records, communications, distributor agreements, advertising materials, and evidence of market presence in Brazil or adjacent markets all matter.

File a trademark application in Brazil now. Even while pursuing nullity, filing protects your client's position going forward and may be required to support certain procedural arguments.

How Reis Araujo Advogados Can Help

International IP firms dealing with bad-faith registrations in Brazil need a local partner who understands both the procedural deadlines and the evidentiary strategy required to build a strong case.

At Reis Araujo Advogados, we handle administrative nullity proceedings, judicial nullity actions, and trademark enforcement matters for foreign companies and international IP offices. We work directly with external counsel to provide the Brazilian-law expertise these cases require.

Contact us to discuss your client's situation → contato@reisaraujo.com.br