Por Dra. Soraya Imbassahy de Mello

With the high number of companies that noticed on the Internet a strong growing market and with quick profit, it gave rise to a new problem, “piracy” of brands through of domain names.
The media always end up spreading the most controversial cases and the stories involving famous companies in litigation to be able to register a domain name to which it is entitled, by having its own trademark.

Therefore, it is primordial today for strategic issues and to not get caught by surprise later, to register the trademark and the domain of the company at the same time.
Initially it’s good to check how is the process of registration of a trademark. This work has various phases that need to be monitored very closely, preferably with the support of an expert.

Established the name to be given to the trademark it is necessary to assess whether there is no equal, similar already being used or in phase of registration.

This investigation is typically conducted by a professional, which charges to examine the possibilities of success based on the principles of existing legislation.

After the research phase and case there is no impediments it is formalized the application for registration of the trademark before the INPI – National Institute of Industrial Property, federal agency responsible for analyzing and granting of trademarks. At this moment, the payment of federal taxes and fees to the specialist takes place.

The next phase is to wait about four months so that the request is published on IPR – Industrial Property Journal, which is weekly. In this period, follow the issues is the only way to know if the application has been published.

When the first publication to third-party knowledge takes place are needed more 60-day waiting for a possible intervention, through a petition of opposition.

If there is a presentation of opposition, the holder of the trademark shall be able to manifest itself, and the examiners of the INPI shall analyze the impasse.

After the time of opposition, the examiners of the INPI shall consider the application, which can extend for more than 24 months. Approved the application, the publication of granting in IPR takes place. Again there shall be fees and payments of fees, so that the trademark is finally granted for ten years.

This whole process is absolutely essential to prevent anyone, acting with bad faith, can get hold of the trademark from others, causing problems in the use of an Internet domain.

It takes work to register a trademark, however, is a lot more work to try to get it back

Facing the technological innovation of the Internet, domain names that are nothing more than paths to get to information available in digital terrain, previously domain names were recognized by numerical sequences which subsequently were represented by words and expressions to facilitate memorizing on the part of users.
So, with the growth of the World Wide Web, Home Pages are true sources of services, entertainment, information and an effective instrument for the dissemination of a certain product and/or service.

All these aspects cause an immediate and direct association between trademark, companies or even people with domains.
Brazilian legislation has not yet been able to resolve conflicts arising from the Internet, specifically. So, to replace the lack of specific legislation, the Brazilian Courts are applying in the alternative, the Industrial Property Laws, Copyright Laws, as well as the Civil and Commercial Code.

Therefore, if such laws exist, although not specific, these must be relentless, but better still is to prevent registering the trademark and the domain at the same time.

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