On September 8, 2020, the Board of Trademarks, Industrial Designs and Geographical Indications of the Brazilian Patent and Trademark Office (“BPTO”) informed that the trademark co-ownership regime will be accepted by the system from September 15, 2020.
Below, we highlight some important points of the co-ownership regime:
- The declaration of activity must be related to all co-owners;
- There will be no limit on the number of co-owners;
- In cases of a forfeiture request, it will be sufficient that only one of the co-owners prove the use of the trademark for defense purposes. However, if the defense is carried out and there are legitimate reasons for not using the trademark, all co-owners must present their reasons;
- Trademark transfers will only be carried out with the authorization of all co-owners; and
- Statements and responses in compliance with office requirements must be signed by all co-owners, however, oppositions, forfeiture requests and administrative nullities can be submitted by only one of the co-owners.
It should also be noted that, during the examination of applications for registration under a co-ownership regime, prior or other existing applications in the name of one of the co-owners may be considered as an obstacle.
To overcome such obstacle, the prior application indicated as an obstacle must be in the name of all co-owners.
It is also worth mentioning that, in order to qualify for the discounts provided for in the BPTO Services Compensation Table, all co-owners must meet the established criteria.
Demarest’s Intellectual Property and Innovation team is available to provide further information or clarification on this matter.