Newsletter IP and Data Protection | October 2020

CO-OWNERSHIP OF TRADEMARKS SYSTEM COMES INTO EFFECT IN BRAZIL

In September 2020, the  Brazilian Patent and Trademark Office (“BPTO” or “INPI”) published a notice informing that the regime of co-ownership of trademarks came into effect on September 15, 2020, continuing Brazil’s adaptation to the procedures provided for in the Madrid Protocol, to which it acceded in 2019 to enable international trademark registration.

Thus, the option of registering a trademark in the name of more than one owner or applicant is now available, both for filing new trademark applications, as well as for already existing applications or registrations, which will be transformed upon the request to record the assignment.

Therefore, please find below the main points to be observed in this new system, according to the BPTO Resolution No. 245/2019:

·  Applicants: there is no limit to the number of co-owners, however, such regime is not allowed for collective trademarks. Also, it is still necessary that owners effectively carry out the activities related to the products or services of the trademarks.

·  Unionist priority:  such right will be guaranteed to the trademark application when filed by the same group of owners who hold foreign priority.

·  Joint acts: except for oppositions, administrative nullity processes, and cancellation requests due to non-use, that may be filed by only one of the joint owners, all other acts concerning trademark registrations or applications, such as assignments, shall be performed jointly by all of the owners or their attorneys-in-fact, or by a single attorney who represents all the owners.

·  Non-use cancellation actions:  trademark registration will not be canceled if at least one co-owner proves the use of the mark. However, in the event of an allegation of legitimate reasons for not using the trademark, all co-owners must present their justifications.

·  Right of precedence: it is necessary that only one of the applicants meets the requirements provided for by law so that the right of precedence to the trademark registration is recognized.

·  Registrability analysis: in the analysis of the registration of a sign as a trademark, the INPI may cite a prior trademark as an obstacle, even if one of the owners of the trademark application under examination is the same as the conflicting trademark

·  Discounts: for the process to be entitled to the discounts provided for in the Fees Table for INPI Services, the established criteria must be met by all co-owners.

Finally, it is important to stress that such new changes will benefit not only international trademark applications and registrations via the Madrid Protocol, but also the national ones. Furthermore, there are still other procedures of the mentioned Protocol pending implementation in Brazil, such as the division of trademark registrations and applications, whose entry into force was postponed to July 1, 2021.

In case of any doubts about this subject, please do not hesitate to contact us.

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