Brazil adopts regime for co-ownership of trademarks and the division of applications and registrations

In view of the accession to the Madrid Protocol, Brazil has needed to seek tools to harmonize trademark registration procedures between national applications and designations received through the Madrid Protocol.

To this end, the Brazilian Patent and Trademark Office (“BPTO”) opened a public consultation to address issues of major relevance to such harmonization.

Accordingly, after the conclusion of the public consultations held between May 14 and June 27, 2019, the BPTO published in the Official Gazette (RPI) No. 2539, of September 3, two new resolutions regarding the processing of trademark applications in Brazil:

  1.  BPTO Resolution No. 244/2019, which provides for the division of trademark registrations and applications, and that will come into force on March 9, 2020; and
  2.  BPTO Resolution No. 245/2019, which provides for the regime of co-ownership of trademarks, that despite coming into force on October 2, 2019, will only be implemented in the BPTO filing system from March 9, 2020.

The third edition of the Trademark Manual detailing the Protocol procedures, which were due for publication at the end of August of this year, has not yet been made available by the BPTO, as well as the Protocol Normative Act. The BPTO has also not yet made available the table of fees applicable to services related to the Madrid Protocol.

Keeping this in mind, below, we list the main points covered by each of the Resolutions published.

i. BPTO Resolution No. 244/2019 (division of trademark registrations and applications)

The division of application/registration may occur when (i) there is an abeyance of the examination of one of the classes of the application/registration (in multiclass system), and (ii) for purposes of ownership transfer.

In the event of abeyance of the examination of a trademark application in a multiclass system, the applicant may request its division. This division will give rise to a new trademark application for the classes in which a final decision can be made.

As for the transfer of ownership, it is emphasized that this will be possible, as is currently the case, if it is in conformity with the rules and requirements applicable to the subject matter in the Industrial Property Law (“LPI”).

The Resolution also provides for the possibility of claiming the transfer of ownership of part of the products or services contained in the specification of the same class of an application or registration.

In any event, the transfer must include identical, similar or suchlike products or services; otherwise, the original application or registration will be canceled or archived.
The division will give rise to a new trademark registration or application for the products or services for which the transfer of ownership has been requested.

Finally, it should be noted that the BPTO also stipulated the following guidelines for the division of trademark applications and registrations:

– The filing will be electronic, except in cases of prolonged unavailability of the system that could cause material damage to the preservation of the subject’s rights; and

– The filing date and priority (if applicable), and the effective period of the original registration (if applicable) will be maintained on the divided applications/registrations.

ii. BPTO Resolution No. 245/2019 (trademark co-ownership)

Co-ownership allows the existence of more than one owner or applicant in a trademark registration or application. The BPTO stipulated some general guidelines relevant to the trademark co-ownership regime:

 The filing will be electronic, except in cases of prolonged unavailability of the system that could cause material damage to the preservation of the subject’s rights;

 BPTO publications on trademark registrations or applications that are under the co-ownership regime will contain information from all co-owners or applicants. For the purposes of official publications and registration with the BPTO, the attorney-in-fact who filed the application will be considered;

 In the case of priority, this right shall be guaranteed provided that the same set of owners/applicants of foreign priority is present. If the set of owners/applicants is different, it will be necessary to present a priority assignment document;

  As is currently the case, all applicants for a joint application must effectively and lawfully engage in an activity related to the claimed products or services, either directly or via companies that they directly or indirectly control, and must state this condition in the application.

 Co-owners or applicants domiciled abroad must observe the terms of art. 217 of the LPI, which provides that “a person domiciled abroad shall appoint and maintain a duly qualified attorney domiciled in the country, empowered to represent him/her administratively and judicially, including to receive summonses”

 Except for oppositions, forfeitures and administrative nullity actions against third party trademarks, all acts at the BPTO shall be performed jointly by all co-owners, applicants or their respective attorneys-in-fact, or by a single attorney empowered to represent all duly qualified persons.;

 Cases that are not undertaken by a single attorney-in-fact must be signed by all co-owners, applicants or their respective attorneys-in-fact;

 In the event of opposition, administrative nullity action or forfeiture request against third party trademarks, the BPTO will receive them even if submitted by only one of the owners of the registration or application on which the allegations are based;

 The trademark registration or application whose set of owners or applicants is not identical, will be considered as a third-party previous right, even if one of the applicants of the subsequent trademark is the same;

 In cases where trademark registrability depends on consent, all of the applicants must be authorized by the rights owner to register the mark as a trademark with the BPTO;

 The right of precedence to a trademark registration will be recognized even if only one of the applicants meets the requirements stipulated in the LPI;

 Forfeiture will not occur when at least one of the owners proves the effective use of the trademark in accordance with the terms provided in the LPI. However, in the event of allegation of legitimate reasons for trademark disuse, the reasons given shall justify the disuse by all the owners;

 In the event of assignment of rights, assignees must comply with the legal requirements to apply for the registration or application object of the transfer request, otherwise the transfer will be rejected;

 As is currently the case, the transfer must include all registrations or applications on behalf of the same set of owners or applicants, of the same or similar trademarks, for an identical, similar or suchlike product or service, under penalty of cancellation of the registrations or archiving of applications not transferred under the same ownership;

 The recording of inclusion or exclusion of co-owners or applicants must be made by means of a petition for transfer of ownership and shall only be made upon presentation of authorization of all joint owners, applicants or their respective attorneys-in-fact, except in the event of judicial or arbitral determination or public deed sharing.

Lastly, it is emphasized that the co-ownership regime is not applicable to collective trademark registrations. For certification trademarks, there may be more than one applicant as long as they have no commercial or industrial interest in the attested product or service.

These two resolutions bring a significant change in the trademark procedures in Brazil.

Our Intellectual Property team is available to provide further information and clarification on this matter.