Although it has been almost one year since Brazil joined the Madrid Protocol, some key procedures for the national trademark registration process remain pending, including:
- the multiclass system;
- the division of applications and registrations; and
- until recently, the co-ownership regime.
On 15 September 2020 the Brazilian Trademark Office took an important step towards fully implementing the Madrid Protocol by approving 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 trademark practitioners should consider 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.
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.
Actions before 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 only one owner.
Legitimacy
According to the Brazilian Trademark Law, applicants must declare that they effectively and lawfully conduct business in connection with the goods and services claimed in the application. In the case of co-ownership, all owners 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 previous trademark applications and registrations whose group of owners is not identical to those of the application under examination will be considered obstacles even if the owners are partially the same.
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 owners; otherwise, the registration will be forfeited.
Non-use cancellation actions
If a non-use cancellation action is filed against a trademark registration under a co-ownership regime, proof of use by only one of the owners is sufficient.
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 owners; otherwise, the registration will be forfeited.
Change of name, headquarters or address
In trademark application and registrations under a co-ownership regime, it is possible to request a change of information regarding more than one of the owners in a single petition.
It is also possible to indicate that the change affects more than one application or registration if they are in the name of the same group of owners. Hence, in order to change the name, headquarters or address of applications and registrations in the name of different owners, more than one petition must be submitted.
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 a co-ownership regime, there must be correspondence between the group of petitioners and the new group of owners. If the supporting documentation for the assignment does not include all of the assignees, an office action will be raised for the applicants to promote the appropriate adjustments.
Notably, the assignment will be carried out only with the authorisation of all of the owners and such authorisation must contain the full qualification of the owners 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.
Comment
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 coming months.
However, the new regime can be seen as great improvement to bring the Brazilian Trademark Office closer to fully implementing the Madrid Protocol.
For further information on this topic please contact Stephany Araújo at Montaury Pimenta, Machado & Vieira de Mello by telephone (+55 21 2524 0510) or email (This email address is being protected from spambots. You need JavaScript enabled to view it.). The Montaury Pimenta, Machado & Vieira de Mello website can be accessed at www.montaury.com.br.
Source: ILO - Acesse aqui | Faça download do artigo em PDF