It has been almost a year since Brazil joined the Madrid Protocol and still some key procedures for the national trademark registration process remain pending, including the multiclass system, division of applications/registrations and, until recently, the co-ownership regime.
On September 15, 2020, the Brazilian Trademark Office took an important step towards the full implementation of the Madrid Protocol by allowing the trademark co-ownership regime for national applications and registrations.
With this new measure, the Brazilian Trademark Office had to make several adjustments, considering aspects such as legitimacy, priority claim, non-use cancellation actions, and assignment of rights.
In light of the above, there are a few important factors that the trademark practitioners should keep in mind when dealing with applications and registrations under a co-ownership regime in Brazil.
The following is an overview of some of the most important points.
- Actions before the Brazilian Trademark Office
Statements and responses in compliance with office actions must be signed by all of the owners. However, oppositions, administrative nullity actions and non-use cancellation actions may be submitted to the agency by one owner only.
- Legitimacy
According to the Brazilian Trademark Law, the applicant must declare that effectively and lawfully conducts business in connection with the goods and services claimed in the application. In the case of co-ownership, all holders must be engaged in a compatible activity and the same condition must be met in the event of an assignment.
- Priority claim
In trademark applications under a co-ownership regime with priority claim, the group of owners must be the same as in the foreign application or registration. If this is not the case, a priority assignment document must be presented before the Brazilian Trademark Office. Otherwise, an office action may be raised requesting such measure.
- Conflicting trademarks
Identical or similar prior trademark applications/registrations, whose group of holders is not identical to those of the application under examination, will be considered obstacles, even if the owners are partially the same.
- Non-use cancellation actions
If a non-use cancellation action is filed against a trademark registration under a co-ownership regime, the proof of use by one of the holders is considered to be enough.
However, in cases of non-use due to legitimate reasons, it must be proven that such reasons justify the non-use by all of the holders; otherwise the registration will be forfeited.
- Change of name, headquarters or address
In trademark applications/registrations under co-ownership regime, it is possible to request the change of information regarding more than one of the holders in a single petition.
It is also possible to indicate that the change affects more than one application/registration as long as they are in the name of the same group of holders. Hence, in order to change the name, headquarters or address of applications/registrations in the name of different holders, it will be necessary to submit more than one petition.
- Assignments
The inclusion or exclusion of owners in trademark applications or registrations may be requested by means of an assignment petition.
Moreover, in assignment petitions that affect trademark applications and registrations under co-ownership regime, there must be correspondence between the group of petitioners and the new group of holders. If the supporting documentation for the assignment does not include all the assignees, an office action will be raised for the applicants to promote the appropriate adjustments.
It is worth noting that the assignment will only be carried out with the authorization of all of the holders and such authorization must contain the full qualification of the holders as well as their respective signatures or those of their attorneys.
The Brazilian Trademark Office did not stipulate a limit to the number of co-owners.
Final thoughts
The practical aspects, as well as the pros and cons of the trademark co-ownership regime in Brazil are still to be discovered over the next months.
However, the new regime can be seen as great improvement as to bring the Brazilian Trademark Office a step closer to fully implementing the Madrid Protocol.
Source: Lexology - https://www.lexology.com/library/detail.aspx?g=67f88bc8-8f7d-4cc5-9404-cc85ea2f0986