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Changes in registration of trademarks in Brazil

As of October 2nd, 2019, the Madrid System will finally become effective in Brazil. The Brazilian trademark registration system, therefore, is being changed by The National Patent and Trademark Office (INPI) in order to be consistent with the WIPO-administered international trademark system.

As a result of this membership, from March 9th, 2020, the benefits of joint ownership, division of applications / registrations and multi-class system will become feasible in Brazil also for those who decide to file through the national registration system route.

Some features related to this new scenario are interesting to be mentioned briefly:

With respect to the multi-class system, as in many countries, a trademark applicant in Brazil will be able, at the filing stage, to apply for products and services pertaining to more than one class. In that case, just like occurs to a single-class application, the examination of a multi-class application will continue to be examined separately by class. By way of explanation: the examination of a class will be independent of the other classes, and it may result in the partial allowance of the application or suspension of the examination if prior pending applications for similar trademark are found in a specific class. In that case, the possibility of having a divisional application is welcome. Indeed, in case suspension of the examination occurs, the applicant may request the division of its application so the new application (with a new serial number but with the same original filing date) will be prosecuted separately from the parent application.  With this new application resulting from the parent application, it will be possible to hasten the examination of a trademark in a specific class, if convenient to the applicant.

The division of a registration or an application will be also possible for assignment purposes. Interesting enough, the assignor can decide to transfer not all the goods/services in an application or registration. With the divisional system, the assignor can transfer part of the goods/services pertaining to a same class (as long as there is no overlap or affinity between the goods/services remaining in the original registration/application and the divisional registration/application).

With respect to the joint ownership, INPI will allow registration for a trademark to be applied in the name of multiple owners. Exception is made to collective trademarks considering that only one organization or association can own a trademark registration.

In joint ownership, co-owners will have to follow the same rule that are applied to a single owner, namely, they may apply only for registration of a mark relating to the activity they effectively and lawfully exercise, either directly or through enterprises they directly or indirectly control.

Some particularities of the joint ownership system are worth mentioning. One of them is related to priority rights.  Priority rights will be secured in Brazil if the co-applicants in the national filing are the same ones indicated in the priority document. Otherwise, an assignment of priority rights must be done to the new applicant in the joint ownership in order to secure the priority date in Brazil.

Another valuable remark is that INPI presumes that each owner is entitled to an equal and undivided share in the application or registration. Therefore, no record will be made in relation of an eventual division of shares in the application or registration.

A third remark is in relation to applications or registrations filed before Resolution INPI/PR n° 245/2019 (allowance of joint ownership in Brazil) entering in force. It will be possible to include one or more owners to these applications or registrations as of March 9^th, 2020.

Finally, co-applicants or co-owners of an application or a registration will be able to act jointly or even solely to safeguard their rights over their trademark, for example, when filing oppositions, nullity or non-use cancellation actions. Naturally, however, when comes to assignment of rights, the co-applicants or co-owners will have to assign a trademark application or registration upon authorization of all the co-applicants or the co-owners (except when the assignment is resulted from a court order or an arbitral legal order).

With the upcoming changes in registration of trademarks in Brazil, trademark applicants expect to have a simpler registration system, with reduction in the number of filings in a cost-effective manner. Costs related to the Brazilian Office’s fees are expected to be reduced not only for the new filing itself, but also for future final fees for registration, renewal, and assignments. Consequently, the new system is expected to bring more efficiency to the administration of the trademark portfolio.

ClarkeModet is following up on these changes closely. If you wish further clarification, you may send your message to brj@clarkemodet.com.br.

Natascha Ballestero