A Competitor Registered My Trademark: How to Cancel the Registration and Recover Your Mark

This page is a translation of the original Portuguese text, provided for convenience. It deals with Brazilian law. If there is any discrepancy, the Portuguese version prevails. Read the original in Portuguese

When a third party registers with the INPI (Brazil’s National Institute of Industrial Property) a trademark identical or similar to that of a business already operating in the market, the injured business owner is not left without recourse. Brazilian law provides administrative and judicial tools to block an improper registration, annul one that has already been granted, and protect the rights of whoever used the mark in good faith before the competing filing.

The Conflict Between Registration and Prior Use of a Trademark

Under the Brazilian system, you acquire ownership of a trademark through a registration validly granted by the INPI. This principle, known as the attributive system, means that as a general rule, whoever files the application first secures title to the mark. The practical consequence is harsh: a business owner who built a reputation around a name but never registered it may watch a third party formally take over that identity.

The problem becomes especially delicate when the third party acts opportunistically, registering a mark identical or similar to that of an established competitor. This creates tension between the security of the registration and the protection of the person who used the mark first. Brazil’s Industrial Property Law seeks to balance the two through specific mechanisms of opposition and protection for the prior user.

The first strategic step is to determine precisely what stage the improper registration has reached. The available defenses vary depending on whether the application is still under examination, has already been granted, or is being used to pressure the legitimate owner of the business.

Opposition: A Preventive Defense During Examination

Opposition is the administrative tool available while the registration application is still pending before the INPI. Once the application is published, any interested party has sixty days to object to its approval, pointing to a conflict with an earlier mark, the risk of confusion or improper association, and the applicant’s bad faith.

This is the cheapest and fastest route, because it works before the registration becomes final. If you regularly monitor the INPI’s Industrial Property Gazette, you can catch attempts at appropriation early and stop the competing mark from advancing. Failing to file an opposition does not rule out later action, but missing this window moves the dispute to stages that are costlier and slower.

In the opposition filing, the business owner shows that the mark was used first, submits evidence of recognition in the industry, and argues that consumers are likely to confuse the origin of the products or services. The strength of the documentation at this stage often determines the outcome of the administrative review.

Administrative Nullity and Lawsuit: Reversing a Granted Registration

Even after an improper registration is granted, an administrative path remains. The administrative nullity proceeding may be started by the INPI on its own initiative or at the request of any interested party, within one hundred eighty days of the grant. It gives you the chance to ask the agency itself to recognize the defect and set aside the act that recognized the third party’s ownership.

If the administrative path has run its course or is not viable, you can turn to the courts. An action to annul a registration is heard in the federal courts, with the INPI taking part, and may be filed within five years of the grant. The business owner seeks annulment of the defective registration and, depending on the case, adds requests for an order to stop using the mark and for compensation for the losses suffered.

When the appropriated mark is actually being used to divert customers, you may also bring an action to stop its use, together with a request for urgent preliminary relief to suspend the improper use immediately. Case law recognizes that delay in stopping the use aggravates the harm, which underscores the value of a preliminary injunction in containing market confusion while the merits are decided.

Choosing one route does not necessarily rule out the others. A well-designed strategy combines the attack on the registration with the defense of the business itself, so that the legitimate owner is not barred from using its own name during the dispute.

Protection for Good-Faith Prior Use

The central argument for someone whose mark has been appropriated is usually prior use. The Industrial Property Law gives a right of precedence to the registration to anyone who, in good faith, was already using an identical or similar mark in Brazil for at least six months before the date the competing application was filed, to distinguish an identical or related product or service.

This right of precedence allows the prior user to claim the registration for itself, either by opposing the third party’s application or by seeking annulment of the registration already granted. Good faith is a prerequisite: the user must show that it adopted the mark legitimately, without knowledge of anyone else’s right and without any intent to free-ride on another’s reputation.

Whoever used the mark in good faith before the competing filing holds the strongest argument in the dispute, provided that person can prove it with a reliable date.

Proving prior use is the sensitive point. The body of evidence includes invoices, contracts, dated advertising materials, domain registrations, social media profiles, and any document that establishes when the use began. The older and more continuous the documented history, the stronger the business owner’s position against an opportunistic registration.

Related doctrines further strengthen the defense, such as protection for a trademark that is well known in its field of activity regardless of prior registration in Brazil, and the prohibition of unfair competition, which punishes the use of fraudulent means to divert another’s customers. These grounds add to the right of precedence and broaden the range of available arguments.

Practical Defense Guidance for Business Owners

The first recommendation is preventive: register your mark as soon as your business adopts its own identity. Registration secures your ownership, spares you the difficult task of proving earlier use, and puts you in the strongest position as the formal owner of the mark.

If you are already facing a third party’s registration, the initial assessment should map out the stage of the proceeding, the exact date of the competing filing, and the evidence you have of your own use. This diagnosis guides the choice among opposition, administrative nullity, a lawsuit, or a combination of them, always with close attention to deadlines, which are short and final once they pass.

Putting together a prior-use file now avoids a scramble for documents in the heat of a dispute. Gathering invoices, contracts, campaigns, and your digital history, all with verifiable dates, turns a claim of prior use into solid proof, one that can support both a claim of precedence and a claim for damages.

Finally, it is worth systematically monitoring new filings in your industry. Continuous monitoring lets you react during the opposition stage, the cheapest and most effective, and reduces the risk that the conflict escalates into years of litigation. When it comes to trademarks, timely action is the best shield for a business’s intangible assets.

Frequently Asked Questions

Does whoever registered the trademark first always own it?

As a general rule, yes, because the Brazilian system grants ownership of a trademark through registration. This principle, however, has significant exceptions. A prior user in good faith who was already using the mark before the competing filing may claim the right of precedence to the registration. A trademark that is well known in its field is also protected regardless of prior registration. As a result, a third party’s registration can be challenged and annulled when you can show legitimate prior use or the applicant’s bad faith.

What is the deadline to challenge an improper trademark registration?

Deadlines vary by stage. While the application is under examination, an opposition must be filed within sixty days of the publication of the application. After the registration is granted, an administrative nullity proceeding may be started within one hundred eighty days. A lawsuit for annulment must be filed within five years of the grant of the registration. These deadlines are short, and once they expire the right to act is lost, which is why monitoring publications and acting promptly are decisive in preserving the rights of the injured business owner.

How can I prove I was using the trademark before my competitor registered it?

You prove it with documents bearing verifiable dates that show continuous, good-faith use of the mark. Useful items include invoices, contracts with customers and suppliers, dated advertising materials, internet domain registrations, social media posts, and any other evidence showing when the use began and that it continued. The older, more continuous, and better documented the history, the stronger your position to claim the right of precedence or to seek annulment of the registration granted to the third party.

As informações deste artigo são de caráter informativo e não substituem consulta jurídica individualizada. Cada caso possui particularidades que exigem análise específica.