The Brazilian legal system is based on the first-to-file rather than first-to-use principle, which means that in order to obtain the exclusivity right of a certain trademark, protection of such must be sought at the Brazilian Patent and Trademark Office (“BPTO”). Only then will the owner, with registration granted, hold the exclusivity rights.
However, the exception to this premise is the right of precedence. This exception is provided for in article 129 of the Industrial Property Law (“LPI”). In such article, it is established that if a user who, in good faith, uses a trademark in the country for at least 6 (six) months, for purposes that are identical or similar to the trademark filed at the BPTO by a third party, such user will be entitled to the right of precedence of such trademark. However, article 129 of the LPI is silent as regards the time at which the claim for right of precedence must be filed in the administrative sphere, which leaves room for interpretation.
The BPTO had been ruling that the claim of right of precedence could only occur prior to the granting of the trademark registration of the third party that had previously filed it (whether considering the date of the filing in the country or of the claimed priority), by means of an Opposition.
The authority did not accept, therefore, the understanding that the right of precedence could be exercised in an Administrative Nullity Action (“PAN”), that is, after the granting of the third party’s registration at the BPTO.
However, recently, in response to a request submitted by a department under the BPTO’s Presidency, the BPTO’s Specialized Federal Office of the Attorney General (“PFE-INPI”) issued an opinion (43/12) contrary to the prior understanding, accepting the claim of the right of precedence at the administrative level, whether through an Opposition or PAN. This is due to the fact that the PFE-INPI understands that there is no explicit limitation in the LPI regarding the time to claim the right of precedence and, in parallel, that there is no limitation on the content required to base the PAN application, as provided for in article 168 of the LPI, allowing the claim of any of the causes of nullity established in the Law.
The PFE-INPI also argues that if there is an administrative remedy provided by Law, as is the case of the PAN, the government should not wait for any legal irregularity to be brought before the Judicial Courts, as it can proceed immediately to annul the trademark in question
In this manner, one more access route is made available to users who, in good faith, seek to ensure the recognition of their rights, provided, of course, that they comply with the other requirements set out in article 129, §1 of the LPI.
Demarest’s Intellectual Property and Innovation team is available to advise you on this matter.