BPTO adopts positions that impact appeals against trademark rejections

BPTO adopts positions that impact appeals against trademark rejections

Felipe Dannemann Lundgren and Patricia Porto

In February 2024, came into force the opinion No. 00017/2023/CGPI/PFE-INPI/PGF/AGU, issued by the Attorney General’s Office (AGO) of the Brazilian Patent and Trademark Office (BPTO), regarding the consultation carried out by the General Coordination of Appeals and Administrative Nullity Proceedings (CGREC) on the limits and scope of the full devolutive effect, foreseen in article 212, paragraph 1, of the Industrial Property Law (IPL), in relation to trademarks. CGREC’s consultation was based on two questions, generating two opinions from the BPTO’s AGO in relation to: 1) appeals against the rejection of a trademark based on a senior trademark registration, which is the subject of a non-use cancellation request; and 2) appeals against trademarks rejected based on absolute grounds, due to lack of distinctiveness, lawfulness, and/or veracity, which were considered registrable in the second instance, remaining open, however, the analysis of the availability of the trademark in relation to potential prior registered marks.

In relation to the first question, CGREC reported, as the basis for the consultation, a situation in which the trademark application was rejected by the BPTO based on item XIX of art. 124 of the IPL. This article prohibits the registration of trademarks that consist of “reproduction or imitation, in whole or in part, even with the addition, of another’s registered trademark, to distinguish or certify an identical, similar, or related product or service, likely to cause confusion or association with another’s trademark”. With the refusal of its application, the trademark owner appealed, claiming that the anteriority preventing the registration of its trademark was not in use in Brazil in the past five years, being the subject of a non-use cancellation request, reason why the examination of the appeal should be suspended until a final decision is rendered in the non-use cancellation proceedings.

According to CGREC the usual procedure in such cases is to suspend the examination of the appeal until a final administrative decision on the non-use cancellation request is rendered. Consequently, if the cited anteriority is cancelled due to non-use, the decision to reject the trademark application would be reversed. In this sense, CGREC asked the BPTO’s AGO if it could proceed with the analysis of the appeal without suspending it, since, at the time of the examination carried out at first instance, the anteriority cited by the examiner was still in force.

In response, the BPTO’s AGO took the view that there is no legal provision for suspending the processing of the appeal in view of a pending non-use cancellation request.

In addition, the BPTO’s AGO stated that any declaration of cancellation for non-use will only have ex nunc (forward) effects, as already stated by the Superior Court of Justice (ERESP No. 964780) and the BPTO’s opinion “PARECER/INPI/PROCI CICONS/Nº 2/10”, and that the decision to reject on the grounds of prior registration of a trademark is legitimate, concluding that there is no legal obligation to suspend examination of the appeal until the non-use cancellation request has been analyzed.

Thus, the BPTO’s AGO concluded that even though there is no legal obligation to suspend the examination of an appeal against the rejection of a trademark based on article 124, XIX of the IPL, until the non-use cancellation request against the senior trademark is analyzed, nothing hinders CGREC from maintaining the practice to suspend the examination of the appeals in such cases, according to its convenience and opportunity.

The BPTO’s AGO then analyzed the second question formulated by CGREC, which refers to cases in which a trademark is rejected at first instance based on absolute grounds, due to lack of lawfulness, veracity, or distinctiveness, and, at the appeal level, the trademark owner proves that the sign complies with these requisites, with the consequent reversion of the rejection on these grounds. In these cases, analysis of the availability of the sign is usually carried out at the appeal procedure itself by CGREC. Often, CGREC finds previous anteriorities that may lead to a new rejection of the trademark, resulting in the publication of an office action allowing the appellant to file further arguments. On this point, CGREC questions whether, when it is found that the first instance has not completed the analysis of the availability requirement and other aspects of the legislation, the process should be returned for a further examination at the first instance.

In response, the BPTO’s AGO stated that, with respect to the principle of plurality of instances and the right to review the application, if the first instance did not analyze the availability requirement, the process should return to the first instance for a new examination in accordance with article 124, item XIX, of the IPL. However, the BPTO’s AGO has considered that, if the evidentiary instruction has already been concluded (without the need for further evidence or hearings), it is possible for the analysis of the availability of the sign to be carried out directly by the second instance, based on the “ripe cause” theory. The rule would be to refer the case to the first instance, but in exceptional cases, when all relevant documents are already available for examination, the decision can be taken directly by the second instance.

Finally, the opinion 00017/2023/CGPI/PFE-INPI/PGF/AGU was given normative effect by a decision issued by the President of the BPTO.

In short, said opinion allows the CGREC to decide on the internal proceedings to be adopted in both situations, according to its convenience and opportunity, and as long as the principle of reasonable duration of the administrative procedures is respected.

The document, in Portuguese, can be accessed via the link: Parecer_n_00017_2023_CGPI_.pdf