The registration of a trademark before a Brazilian Patent and Trademark Office (BPTO) is a public title that ensures the ownership and exclusive use of a trademark to identify a product or service in the Brazilian territory.
A trademark registration is granted after the payment of an administrative fee and it is valid for a period of 10 (ten) years and may be extended for another 10 (ten) years and in an uninterrupted way. However, do you know the ways a owner can lose the registration of a trademark already granted?
As provided in the article 142 of the Brazilian Industrial Property Law, the registration of a trademark may be revocate in 4 (four) ways:
Revocation through absence of extension
Revocation through the absence of extension is the natural cause of the extinction of a trademark registration and it happens when the ten-year period ends and the owner does not request, within the ordinary and extraordinary deadlines, the extension of this registration.
Revocation through renounce
Renounce is an act which the owner who no longer has an interest in maintaining his trademark registration before the BPTO. This act may be total or partial, that is, in the event that the holder only renounce some of the products or services specified in his trademark registration.
Revocation through non-use action
This form of revocation is only request by an interested third party and cannot be declared by the BPTO.
For a trademark fulfill its social function, the owner of a a trademark registration must be start its use within a period of 5 (five) years, counting from the grant date. If it is not being used, a third party may request the expiry of a registration so that it becomes available to be explory by anyone.
Revocation in the case of the owner is domiciled abroad and does not constituted an attorney domiciled in Brazil
Finally, as the title describes, the revocation of a trademark registration can also occur in case the owner is domiciled abroad and not maintain, in national territory, a Brazilian attorney before the BPTO or in the judicial sphere.
Therefore, in order to avoid the loss of a trademark registration, it is extremely important to appoint an Brazilian attorney specialized in intellectual property so that it can monitor the period of extension of a registration, as well as the use of the trademark.
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Author: Beatriz Cambeses Alves, Junior Associate at Peduti Advogados.
Source: Registro de marca
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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.”