Written by Rafael Garutti
Brazilian Patent and Trademark Office (INPI) analyzes relative and absolute grounds during the trademark examination. According to the Article 124, XIX of Brazilian IP Law, reproductions, in whole or in part, of a previous mark registered in the country likely to cause confusion between the consumers are not registrable as trademarks in Brazil.
If a mark is refused based on likelihood of confusion, there are some measures that may be taken against the third party’s cited mark.
- Consent Letter
According to Technical Report nº 01/2012 of Brazilian PTO Committee related to Improvement of Prosecution and Examination Guidelines, Brazilian PTO is not obliged to accept trademark coexistence agreements or consent agreements (letters of consent), those documents are considered an “aid” to assist the examiner’s analysis.
However, letters of consent could be accepted if it’s proved that trademarks cannot cause confusion between consumers.
- Purchasing the prior registration mark / Trademark Assignment
It’s possible to approach the cited mark owner and purchase their mark to have yours registered. However, it will be not possible to assign it back to them after the refused mark is registered, since according to Article 135 of Brazilian IP Law, the assignment must include all identical or similar marks in the name of the assignee relating to similar goods/services, under penalty of cancellation of the registration not assigned.
Therefore, it is not possible to purchase the prior trademark registration from the owner and then assign it back to them, since you should assign all the similar marks.
- Limit the scope of protection
It’s possible to limit the list of goods or services in order to have your trademark accepted by Brazilian PTO.
The list of goods and services should be analyzed by an IP professional which is able to provide comments and suggestions regarding the trademark specification.
- Administrative/Judicial measures against third party TM registration
If your client has prior rights and/or previous use in the country, it’s possible to file an Administrative Cancellation before BPTO to try to cancel a registration within 180 days counted from the date of grant.
Likewise, it’s still possible to try to cancel the cited registration via Cancellation Action within 5 years counted from the date of grant. The Legal Action can be filed directly (without to file an Administrative Nullity), however it’s suggested to file the Administrative Nullity at first, since it’s cheaper and less bureaucratic.
After 5 years from the grant of registration, the unique way to cancel a registration is the filing of a non-use cancellation action. Owner of registration should prove the use of the mark in Brazil during the last 5 years or explain a rightful reason for the non-use.
Remark: Brazilian PTO only accepts the previous use argument if it is argued in the opposition, but there are some judicial decisions that accept it in the cancellation.
Independently of any measure above mentioned, it’s necessary to file an appeal against the decision of refusal of the registration before Brazilian PTO within 60 days from the Notice of Refusal in order to keep the application alive, since in the lack of an appeal, application will be considered definitely abandoned. It is not possible to revive an application if no appeal is filed.
In the draft of the Appeal, it’s suggested to request to Brazilian Trademark and Patent Office (INPI) to await the decision of any measure taken against the cited mark, since if it is cancelled, refused trademark may be accepted.
If the appeal is not successful, it’s possible to discuss the decision before Brazilian Federal Courts.
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