The opposition procedure on international trademark applications in Brazil

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When a trademark application is filed in Brazil, the Brazilian and Trademark and Patent Office (BPTO) publishes the application so that third parties can file opposition within 60 days.

Afterwards, the opposition is published on the Brazilian Trademark Gazette and the owner has 60 days to respond to it.

Finally, the BPTO analyzes the opposition and the trademark application. At this point, the BPTO can issue office actions or issue a decision approving or rejecting the application.

Differently of from other countries, like USA, China and European Union, where the formal and substantive examination are conducted before the opposition period, in Brazil the BPTO firstly performs the formal examination and then publishes for opposition purposes. After this procedure, the Office conducts the substantive examination, followed by the final decision.

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It is important to be aware of this information, mainly, when filing a trademark application through the Madrid Protocol. The BPTO notifies the owner through WIPO when an office action or a final decision is issued. However, oppositions are not included in WIPO’s notification system, and applicants will be only notified through the National Gazette.

So, in case the trademark owner does not have a local agent, he may not be informed about the opposition and, consequently, may not have the opportunity to respond to it. Therefore, the trademark application will be examined – and maybe rejected – based only on the opposition arguments.

If the owner is interested in having a trademark registered in Brazil through Madrid Protocol, hiring a local agent to monitor the application shall be taken into consideration.

If you have any question regarding oppositions procedures in Brazil, feel free to contact Peduti Advogados.

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Author: Laila dos Reis Araujo, Senior Associate & Head of The International Department 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.”

It has been a year since the Madrid Protocol was implemented in Brazil

It has been a year since the Madrid Protocol was implemented in Brazil. Recently, the Brazilian Trademark and Patent Office (INPI) released the numbers about the new trademarks in Brazil filed through the Madrid Protocol, 7896 international applications pointed Brazil. 

As promised, INPI has reduced the timeframe to issue a first decision regarding the examination of trademarks. At the beginning of 2019, the trademark application used to take between 02 to 03 years to be granted. Now, if there is no opposition, the trademark can be granted in 10 months. 

Regarding the modifications on the rules of a trademark application in Brazil due to the implementation of Madrid Protocol, since September is possible to file a trademark in co-ownership. 

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Lawyer Author of the Comment: Laila dos Reis Araujo

“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 trademark ownership by more than one company will be allowed in Brazil from September 15, 2020

Since last year, the Brazilian Trademark and Patent office (INPI) has published a resolution stating rules about the trademark ownership in Brazil. In accordance with the Madrid Protocol rules, the states should allow that more than one company/person to be owner of the trademark applications.

This resolution will be in force from September 15, 2020. Thus, it will be possible to file new trademarks in name of more than one company. It will also be possible to transfer part of an application filed before this resolution allowing the co-ownership.

When a trademark is owned by more than one company, it will be allowed that just one of them to oppose against a similar trademark. However, to respond an office action or an opposition is mandatory the signature of both.

If you have any question regarding this new procedure feel free to contact Peduti Advogados.

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Lawyer Author of the Comment: Laila dos Reis Araujo

“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 Brazilian trademark and patent office is making changes in order to improve the trademark system

The Patent office has published a resolution this week with new rules for examination of patents. The examiner will be allowed to use the  searches already carried out by another Patent Office in cases of patents filed in Brazil through PCT or CUP. 

The examiner will issue an office action requesting the applicant to talk about the cited documents and  make adjustments if necessary. After that the examiner will decide about granting the patent or not. 

Implementing these changes the Patent office expects that the backlog will be reduced in 80% until 2021. After that they believe that the timeframe for examining patents would take around 02 years. 

In order to implement the Madrid Protocol the Trademark office is also making changes on the system. The trademarks used to take around 3 years to be granted, now the applications are being examined in around 01 year.  

The Senate has approved the adhesion of Brazil in Madrid Protocol. From October 02, 2019 it will be possible to file trademarks in Brazil through Madrid Protocol. 

In Brazil is not possible to file multiclass applications but probably it will be possible next year. 

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Lawyer Author of the Comment: Laila dos Reis Araujo

“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.”

Madrid Protocol implementation in BRAZIL

It is essential to ensure that adherence to the Madrid Protocol does not generate unwanted asymmetries between Brazilians and foreigners, which makes the application of the principle of non-discrimination an objective to be achieved by legislators.

In order to prepare the Brazilian system of registrations for the imminent adhesion, Bill 10.920/18  was drafted, with amendments to Law 9.279 / 96, aiming at maintaining isonomy between nationals and foreigners, without loss of competitiveness.

The main claim of the Bill is the inclusion of rules that will be followed by both Brazilians and foreigners who wish to register a trademark in Brazil. These rules are:

  1. Proof of activity compatible with the application for registration filed through the Protocol;
  2. Possibility of co-ownership of trademarks, which is currently prohibited by INPI;
  3. The possibility of filing in the “multi-class” system, in which a single application can be presented for different market segments;
  4. Publication of the application in Portuguese, for opposition purposes;
  5. Automatic approval of the application for registration if its regular examination is not completed within 18 (eighteen) months of the date of the filing;
  6. Also in requests made through the Protocol, the foreign holder must appoint a prosecutor with powers to receive court summons; and
  7. Need for declaration of use or justification of disuse during the sixth and during the last year of registration.

Currently the Bill is in the Committee on Economic Development, Industry, Commerce and Service, so that, if it deems necessary, amendments to the Project can be submitted before its judgment.

With or without the approval of Bill 10.920/18, adherence to the Madrid Protocol will generate important changes in the trademark registration process in Brazil. And our office will always be available to advise companies that wish to protect their assets in Brazil.

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Lawyer Author of the Comment: Vittória Cariatti Lazarini
Source
Headline: A adoção do Protocolo de Madri e o Projeto de Lei 10.920/18

“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.”