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. 2540, of September 10, the BPTO Resolution No. 248/2019, which provides the trademark regime in a multiclass system which 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, as well as the Protocol Normative Act, were also made available. These two themes will be the subject of a separate newsletter. The BPTO has also not yet made available the table of fees applicable to services related to the Madrid Protocol.
Below, we list the main points covered by the BPTO Resolution No. 248/2019.
The adoption of the multiclass system allows the specification of products and services relating to more than one International (Nice) Classification class in a single process. The BPTO has established some general guidelines relevant to the adoption of the multiclass system:
- 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;
- The specification must be informed at the time of filing the application;
- The mark registrability in a multiclass system will be done separately in each class, thus allowing different scenarios and results for each class of the same application, so the examination may result in 3 scenarios:
a) Allowance, when there is the total acceptance of the application, and the trademark does not incur legal prohibition in any of the classes claimed;
b) Rejection, when the trademark incurs a legal prohibition in all classes claimed; or
c) Partial allowance, when the trademark incurs a legal prohibition in part of the classes or when there is a restriction or change, by the BPTO, on the specifications of products and services. In the case of partial allowance, the classes in which the application was allowed, the classes in which the application was rejected and/or suffered changes in the specifications (may be appealed) will be indicated. Regarding the partial allowance, it is important to note that:
c.1. The payment of the granting fees in the classes in which the application is allowed, even if with restriction or amendment on the specification of products and services, should be made, as is currently the case, regardless of the appeal, under penalty of such application being shelved;
c.2. The payment of the granting fees in the classes in which the application is allowed on appeal must be made within 60 days from the date of allowance, under penalty of such application being shelved;
c.3. In the event of an appeal against the partial allowance, the registration will only be granted after the decision and proof of payment of the corresponding fees.
- In case of abeyance for one or more classes, the entire application will be kept in abeyance;
- In order to analyze the registrability of the trademark in a multiclass system, the BPTO Examiner will perform an anteriority search made exclusively in the classes claimed in the application under analysis, except for the cases of correspondence in the former national classification, as is currently the case;
- In the case of divergence between the specified products and services and the informed classes, the BPTO may issue office actions regarding:
a) The payment of complementary fees for the inclusion of new class(es); or
b) The indication of products and services to be excluded from the specification.
In the event of assignment of rights, the registrations or applications in the name of the assignor, for identical or similar trademarks in relation to classes containing identical, similar or suchlike products or services to those transferred, will be either cancelled or shelved. The cancellation or shelving will apply to the entire class.
This resolution brings a significant change in the trademark procedures in Brazil.
Our Intellectual Property and Innovation team is available to provide further information and clarification on this matter.