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.”

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.”