by Rodrigo Borges Carneiro
February 01, 2007
As part of its attempt to reduce the trademark application backlog, the Brazilian Patent and Trademark Office (INPI) is sending out personal letters reminding all trademark applicants that have pending trademark applications filed on or before December 31 2004 to confirm whether they wish to have these applications examined.
On November 1 2006 INPI called on all trademark applicants to indicate specifically which of their pending applications they are still interested in having examined. This call applied to all trademark applications filed on or before December 31 2004 for which examination has not been completed. The purpose was to avoid wasting time examining applications in which applicants had lost interest. The communication also set out that those applications for which confirmation of interest was not received within the deadline would be subject to specific office actions, which would generate costs for applicants. The deadline for responding to INPI’s call was to expire on December 7 2006, but was later extended to January 7 2007. INPI is now issuing reminders to all those that have not yet responded.
While INPI’s objective is noble, the method chosen is far from ideal and will most certainly generate litigation. First, the deadline by which applicants had to respond was very short. Second, it is unfair, to say the least, to charge applicants a fee to maintain an application for which they have already paid a filing fee – the delay in examining their applications is clearly not attributable to them. An alternative could have been to ask applicants to withdraw, voluntarily, pending applications that were no longer of interest.