By Sonia Carlos, Rafael Garutti and Lara Damim
From September 15th, 2020 it will be possible to file trademarks in the name of more than one applicant in Brazil and it will also be possible to add applicants/owners to an existing trademark application/registration by performing an assignment.
According to Resolution INPI/PR No. 245/2019 of 08-27-2019 and Brazilian Trademark Guidelines, there are important particularities concerning this matter:
– Co-owners domiciled abroad must appoint and retain a Brazilian representative, granting powers to represent the foreign owner in administrative and judicial proceedings, including to receive summons, according to Article 217 of Brazilian IP Law.
– Brazilian Patent and Trademark Office (Brazilian PTO) shall not record the ownership percentage of each co-owner.
– As Brazilian PTO analyzes relative and absolute grounds, it is important to check whether there are previous similar marks in the name of the owners.
For instance: A new trademark filed in the name of applicants “A” and “B” (in co-ownership) shall be refused by the PTO if the above-mentioned applicants (“A” + “B”) owns a previous similar mark in co-ownership with owner “C”, since the joint-owner “A + B” is different than the join-owner “A + B + C”.
– Just one co-owner may prove the use of a trademark whether a Non-Use Cancellation request is filed, however, all the co-owners must justify the failure to use the trademark for legitimate reasons.
– Assignments (transfers of ownership) must be authorized by all the co-owners (except in case of judicial determinations) and should include all the registrations or applications in the name of the assignors, for the same or similar marks, related to an identical, similar, or alike good or service; under penalty of having the registrations cancelled or the unassigned applications dismissed, according to Article 135 of Brazilian IP Law.
– Oppositions, Non-Use Cancellations and Administrative Cancellations (Nullities) against others may be filed by just one co-owner, however other acts performed before Brazilian PTO (e.g.: manifestations and responses to office actions) should be jointly filed by all the co-owners.
– The right of preference for the registration will be recognized when one of the applicants meet the Brazilian IP Law requirements.
– Co-ownership system will be not applied for collective marks.
– All applicants using co-ownership system must effectively and lawfully engage the activity related to the claimed goods or services, either directly or through companies they directly or indirectly control, declaring that condition in the application form.
For further infFor further information, please contact our team at info@cnvbrazilcom.br
