New guidelines about trademark and patent appeals in Brazil

Brazilian Trademark and Patent Office (National Institute of Industrial Property – INPI) published on December 12th, 2023 a presidential decision giving Normative Effect to the legal guidelines concerning the limits and application of the devolutive effect of the appeal, due to Opinions issued by the Attorney General’s Office.

According to Article 212 (1) of Law No. 9.279/96 (Brazilian IP Law), appeals shall be received in full suspensive and devolutive effects, applying all the provisions concerning the first instance examination, when applicable.

In summary, the Opinion no. 00016/2023/CGPI/PFE-INPI/PGF/AGU (0900474) provides that if the applicant does not correct an error in the first procedure opportunity available, the error is not going to be rectified; furthermore, if no power of attorney is filed in due time (60 days after the filing receipt), the application shall be definitively abandoned and no appeal will be acknowledged concerning this matter. Finally, if a new relevant matter is included in the petition and it can directly affect the administrative decision, the application shall return to the first administrative stage; however, if the matter can be immediately analyzed in the second stage, the appeal will be examined.

The Opinion no. 00017/2023/CGPI/PFE-INPI/PGF/AGU (0903178) brings significant information to the Brazilian trademark system. The appeals may no longer be suspended in case the previous registration cited has a Non-Use Cancellation pending of decision. According to the Opinion, if the application is refused based on a previous trademark registration (Art. 124, item XIX of the Brazilian IP Law), against which a Non-Use cancellation was filed, there is no legal obligation for the suspension of the appeal, since the Non-Use Cancellation decision does not have retroactive effects (ex tunc). However, the IP Office may (at their end, based on its convenience and opportunity) keep the suspension. In addition, when the trademark examiner did not analyze the previous marks registered during the examination and refused the mark based on absolute grounds only, in case that mark is considered distinctive, the examination concerning the relative grounds (trademark availability) should be performed again in the first stage; however, when the matter can be analyzed in the second stage based on adequacy and convenience, the merits of the examination shall be decided for the appeal instance.

Also, Opinion 00018/2023/CGPI/PFE-INPI/PGF/AGU (0906219) provides that if the reasons for refusal are not spent, a new refusal notice will be issued. The first administrative stage has the competence for analyzing the reasons for refusal, however, the examination can be decided for the appeal instance if applicable.

Lastly, Opinion 00019/2023/CGPI/PFE-INPI/PGF/AGU (0915615) deals with patent cases. The Opinion explains that it will be not possible to innovate in the appeal stage, even for reducing the scope of the set of claims due to the administrative preclusion. Furthermore, office actions that are not satisfactory replied, cannot be solved in the appeal state.

On December 26th, 2023 a communication about this issue was published in the Brazilian IP Official Gazette, rectifying the deadline for the validation of the normative ordinances that will take place in Brazil from April 2nd, 2024. Amendments to the appeals aiming for eventual adjustments will be accepted until April 1st, 2024.

Do you have any questions concerning this subject? Please feel free to contact us, CNV IP Law Firm has a specialized team in appeal matters and we are at your disposal to assist you in Brazil.

Rafael Garutti
Attorney at Law / Senior Partner
CNV IP Law firm