Cancellation for nonuse of trademarks in Brazil

Cancellation for nonuse of trademarks in Brazil

After obtaining the trademark registration, it is important to continue using the trademark as the one requested within the application. If you’ve had a trademark for more than five years and you start using a different mark, with another words, colors, or designs, you can lose your trademark registration in Brazil.

According to the Brazilian law, “after five (5) years of its granting, on the date of the application, the registration, upon request of any person with legitimate interest, shall expire if: 

I – the trademark has not been used in Brazil; or 

II – the trademark has ceased to be used for more than five (5) consecutive years or, within the same term, the trademark has been used in a different manner, causing its original distinctive nature to be changed, as provided for in the certificate of registration”.

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Cancellation for nonuse of trademarks in Brazil

So, if you cease the use of your trademark or do any change you can lose your trademark.

Sometimes, the registrant wants to promote changes in the trademark, in this case, if any detail is modified in the trademark, you must file a new trademark application.

On the other hand, if you want to register a mark and you find a previous mark of third party that is not in use, you can request the cancellation of this trademark registration, as long as you prove the legitimate interest. If the request of cancellation for nonuse is accepted by the BPTO, your trademark application has a better chance of being granted.

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Author: Luciana Santos Fernandes, Associate Lawyer at Peduti Advogados.

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“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”
“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”

The Skate Fairy – Rayssa Leal fights a dispute in Brazil for the annulment of the registration of the trademark “Fadinha do Skate” (The skate fairy)

In September 2019, a company called RRS Odontologia, a dentistry company located in Maranhão, Brazil presented a trademark application for the trademark “FADINHA DO SKATE” (the skate fairy), nickname Rayssa (Olympic Athlete) is known for in the whole world.

In August 2020, Rayssa claimed the cancellation of the trademark register before the BRPTO based on article 124, XVI in which is stated that a trademark it is not registerable as a well-known pseudonym or nickname, singular or collective artistic name, except with the consent of the owner, heirs or successors.

The expression “FADINHA DO SKATE” it’s a well-known nickname adopted by Rayssa and the dentistry company did not have the consent from Rayssa to register it as a trademark. The Olympic athlete’s defense argued that “A simple search for the expression on Google returns numerous news, images and videos with quotes from the nickname with which the applicant was famously known in the country and in the international sports world”.

 

Rayssa Leal, a ‘Fadinha do Brasil”, comemora a conquista da medalha de prata no skate street
Foto: Wander Roberto – 26.jul.2021/COB

 

To get the trademark, Rayssa had two paths: requesting the registration of the same expression in different categories than the company in her city already has (clothing and medical and educational services) or trying to cancel the granted registrations. She chose the second one and is trying to cancel the third-party registration.

Then, the BRPTO will analyze if the trademark “FADINHA DO SKATE” its really a well-known nickname as she defends.

The main discussion is that this decision will depend on the it evidence presented by Rayssa because the truth is: this nickname is highly associated with her now due to the Olympic games but is she known by this nickname for that long? Or was it only well-known by the skaters?

Considering the chances of Rayssa, its not possible to know whether the BRPTO will follow one or other path. The BRPTO can point out that she should have monitor this trademark applications before its grant and not after that.

In these cases there is more chance to cancel the trademarks in a nullity action than administratively in the BRPTO. But, the BRPTO can follow another understanding regarding this matter.

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Author: Laís Iamauchi de Araujo, Associate Lawyer at Peduti Advogados.

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“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”
“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”