With Brazil’s upcoming adhesion to the Madrid Protocol (exact date still pending), the Brazilian Patent and Trademark Office (“BPTO”) has been preparing to implement some relevant measures for better aligning with the procedures of the Madrid Protocol, among which we highlight:
- the processing of a trademark registration in a multi-class system (e. possibility of requesting the protection of more than one class of product or service in a single application); and
- registration under a co-ownership policy (namely, the possibility of a trademark application/registration being held by more than one owner).
According to the BPTO’s report, resolutions governing trademark registration under the new conditions to conform to the Madrid Protocol will be published.
Information regarding the public consultations in relation to each Resolution will be made available by the BPTO for the contribution of the general public, via e-mail or by means of a particular form, specific to each consultation. After the deadline of each consultation, the BPTO will present the proposals received, the responses to the contributions and the final text of the Resolution.
With the publication of Ordinance No. 02/2019 issued by the Board of Trademark Registrations of the BPTO (DIRMA) in Official Gazette No. 2523, of May 14, 2019, the public consultation on multi-class processing is open. The draft submitted by the BPTO proposes, in summary, the following:
- the specification of goods or services relating to more than one class of the Nice International Classification, requested at the time of filing in electronic format;
- the registrability of the trademark will be analyzed separately in each class and, therefore, the application may be (a) granted (if the trademark is available to be registered in all classes sought); (b) rejected (if the trademark is not available for registration in any of the classes sought); or (c) partially granted (if the trademark incurs a legal prohibition in part of the classes or if there is a restriction on the specification of goods and services, subject to appeal against the decision). The deadline to proceed with the payment of the official fees concerning the first ten-year protection period of the trademark will observe the terms of Article 162 of Law 9.279/96 as it currently stands.
- in the case of a priority that has not yet been definitively decided on one or more of the requested classes, the examination of the trademark application shall be held in abeyance as a whole.
- in the case of trademark assignment, the registrations/applications in the name of the assignor of equal or similar trademarks, regarding classes containing identical or similar goods or services to those transferred, will be cancelled/shelved. The cancellation/shelving will be applied to the class in its entirety, regardless of the existence of goods or services not related to those transferred.
The term for contributions to the abovementioned proposals is 30 days, between May 14 and June 13, 2019.