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Trademarks in Brazil: A mediation process for Trademark registration Applications

The BPTO (Brazilian Patent and Trademark Office) has recently established, in partnership with the World Intellectual Property Organization (WIPO), a Mediation Center through which the parties may seek a resolution for an impasse in an amicable and, consequently, fasten way in respect to trademark applications that have been challenged with Oppositions, Appeal or Administrative Nullity Procedure.

The Mediator, who can be selected from a list made available from the BPTO/WIPO or freely indicated by the parties, will seek a solution of the controversial issues with the Parties, not being entitled, however, to propose any type of agreement.

If, during the mediation procedure, the Mediator perceives that it is not possible to reach an amicable solution, he may indicate to the Parties other procedures/strategies which he understands to be more suitable to solve the matter.

It is important to state that the confidentiality of the whole process of mediation is insured through a Liability Commitment which shall be signed by all the persons involved.

The BPTO, through the CEDPI (Center of Defense of the Industrial Property) will also offer pre-mediation services, by orientating the Parties towards deciding whether the mediation is, in fact, the best way of sorting out their conflicts.

The cases submitted to mediation will be placed in a “mediation row” exclusive for the trademark applications under mediation procedure at the BPTO, meaning that the same case will leave the row in which it is currently positioned and will enter a new row, where they shall be analyzed over a maximum time period of 180 days.

There is also the possibility of requesting a preliminary technical consultation on the feasibility of the agreement prepared by the Parties. In this case, the consultation will be referred to the technical area in charge at the BPTO, DIRMA (short of Directorate of Marks) or CGREC (standing for General Coordination of Appeals and Cases of Nullity Administrative Procedures).

These Agencies will issue an opinion about the feasibility of the Agreement or not. Whenever possible, the Opinion will also indicate the need of some amendments to the Agreement for the same to be viable.

After discussions with the Parties, the Mediator will then notify the CEDPI on the end of the mediation, advising whether there has been an agreement or not. Should there be an agreement, this shall be submitted at DIRMA or CGREC for the analysis of the administrative cases to be resumed or stayed.

In this respect, it is important to state that, even though the Parties have reached a compromise, the BPTO´s competent technical sector will receive the same by way of supporting arguments, i.e. the BPTO is not bound to sanction what has been decided between the Parties.

This seems to be a point ending to inhibit the interest in the mediation, since, even if the Parties manage, after a mediation process, to reach a favorable solution to both of them, respecting the marks in conflict, there is no guarantee that the same agreement will be sanctioned by the BPTO.

Thus, it might be that, up to date and for that reason the BPTO has not received any mediation petition, at least until May 2014. As an incentive measure, the BPTO is offering exemption of the official fees for the first 10 case to be submitted.

Anyway, only in the process of time there shall be proved the efficacy or not of the mediation process.

The BPTO´s intention, however, is that the mediation may cause the expedition of the trademark cases which have been challenged by opposition, appeal or Administrative Nullity Procedure.

Fabrize Machado