Over the last week, two major news updates emerged concerning Industrial Property rights prosecution in Brazil:
- the Senate approved Brazil’s accession to the Madrid Protocol; and
- the Brazilian Patent and Trademark Office (BPTO) opened public consultations on the joint ownership system of trademark registrations and the possibility of splitting trademark registrations and applications .
Below you can find the highlights of these news updates.
Senate approves Brazil’s adhesion to the Madrid Protocol
On May 22, 2019, the Federal Senate approved Draft Legislative Decree No. 98/2019, allowing Brazil to join the Madrid Protocol. The system is expected to start operating in October 2019.
The Madrid Protocol allows the protection of a trademark simultaneously in every country that is a signatory to the treaty. According to the BPTO president, Cláudio Vilar Furtado, the 120 member countries today account for more than 80% of all international trade operations.
Once the system is operational, the BPTO will be able to send trademark applications to the World Intellectual Property Organization (WIPO), based in Geneva, which will be in charge of forwarding them to other member countries. It is important to note, however, that the sovereignty of each country or regional office will be maintained in regards to the examination of all trademark applications received via the Protocol, according to the rites and laws of each country.
Among the most significant advantages of joining the Protocol, it is worth mentioning: (i) the 18-month maximum limit for local offices to examine trademark applications and determine the registrability of the marks; (ii) a significant reduction in costs to applicants seeking protection for their trademarks in multiple countries where, currently, they have to deal with different authorities and languages, pay various fees in different currencies, etc; (iii) an increase in the competitiveness of local companies; and (iv) the de-bureaucratization of the trademark registration process in the member countries.
In the European Union, Japan, Australia, Russia, China, the United States, among others, the Madrid Protocol has been in force since April 1996.
Additionally, public consultations on relevant issues arising from the transition to the Protocol system are being launched in Brazil in order to establish the procedures to be adopted in the country. Public consultation on the multi-class system has already been opened, and now the BPTO is starting the debate on co-ownership and the possibility of splitting trademark registrations and applications.
The BPTO opens public consultation on co-ownership and division of trademark applications and registrations
On May 21, 2019, upon the publication of the BPTO Trademark Board’s Resolutions Nos. 03/2019 and 04/2019 in the Official Industrial Property Gazette No. 2524, the term for public consultation on the Draft Resolution that will allow the joint ownership and the splitting of trademark registrations and applications in Brazil has started.
Some of the main points of the Resolutions include:
- The Resolutions regulate the co-proprietary system in trademark processes, allowing for the recordal of more than one titleholder or applicant through trademark registration or application.
- The Resolutions determine that the acts set forth in the Industrial Property Law concerning trademark registrations or applications must be practiced jointly by all co-owners or applicants or by a sole agent, either an individual or legal entity, suitably qualified and with powers to represent all parties involved. When practiced by co-owners or applicants, the acts must be signed by all, or one of the parties with powers to represent the others.
- The Resolutions determine that co-owners or applicants with headquarters abroad must comply with the provisions of Art. 217 of the Industrial Property Law, which stipulates that such person/s must “constitute and maintain a suitably qualified attorney domiciled in the Country, with powers to represent said person/s administratively and judicially, including to receive judicial summons.”
- The right of priority to a trademark application will be assured when it is filed by the same group of applicants of the foreign priority.
- The opposition or administrative nullity will be received even if submitted by only one of the applicants or titleholders of the claimed prior right.
- Collective and certification marks that have been extinct for less than 5 (five) years may be registered in the name of third parties, in co-ownership, when all co-owners of the extinct trademark registration belong to the applicant group
- The right of precedence to trademark registration will be granted when one of the applicants meets the requirements set forth in the Industrial Property Law.
- In order to record the inclusion or exclusion of co-owners or applicants of trademark registrations or applications, a petition of transfer of ownership must be made.
- The transfer of rights related to trademark registrations or applications will only be recorded with the authorization of all co-owners or applicants, except in cases of a legitimate or testamentary succession, for which the provisions of the Trademark Manual of the BPTO must be observed.
- There will be no cancellation due to non-use when at least one of the co-owners succeeds in proving use of the mark. If there are legitimate reasons for the non-use of the trademark, the reasons given should apply to all co-owners.
The BPTO also highlighted the following, in line with the provisions that are currently in force:
- Co-applicants must effectively and lawfully engage in an activity compatible with the claimed goods or services, and must declare this condition in the application for registration, under penalty of abandonment.
- Co-applicants for collective trademarks must be legal entities representative of the collectivity.
- Co-applicants for certification trademarks cannot have direct commercial or industrial interest in the goods or services that are being certified.
- The transfer of rights shall include all registrations or applications on behalf of the same set of co-owners or applicants, for the same or similar trademarks, covering identical, similar or related goods or services, under penalty of cancellation of the non-transferred registrations or filing of the non-transferred applications under the same ownership.
Concerning split trademark registrations and applications:
- The Resolutions regulate the possibility of splitting trademark registrations and applications in the multi-class system, which can be made at the request of the titleholder or applicant.
- If the examination of a multi-class trademark application is held in abeyance, the applicant may request its division into two or more applications, resulting in new applications for other classes in which the trademark could be registered.
- The trademark registration application can be split for purposes of transfer of ownership, in which the applicant must submit a petition for each registration or application. The division will result in new registrations or applications, covering the goods or services claimed in the ownership transfer.
- The Resolutions regulate the possibility of requesting the transfer of part of the specification of goods or services within the same class. In this case, the new application or registration should include identical, similar or related goods or services, under penalty of cancellation or permanent filing of the original registration or application.
Interested parties have 30 days, calculated from May 21, 2019 – that is, until June 20, 2019 – to send suggestions on the co-ownership system.
Our Intellectual Property team is available to provide further information or clarification on these developments