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Brazil adopts the regime of trademark co-ownership and division of applications and registrations

by Ana Lúcia de Sousa Borda, Rafaela Borges Walter Carneiro, Alvaro Loureiro Oliveira, Rafael Atab

September 09, 2019

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On September 3 the Brazilian Patent and Trademark Office (BPTO) published the first two of four resolutions to be implemented by said agency, in view of Brazil’s accession to the Madrid System for the International Registration of Marks.

They are Resolutions 244/2019 and 245/2019, both of 27 August, 2019. They deal respectively with the division of trademark registrations and applications for trademark registration and co-ownership.

However, before highlighting the main points of each of these resolutions, it is important to draw attention to the fact that they will apply equally to applications filed in Brazil, that is, even to those applications for registration that will not serve as a basis for an international registration with WIPO.

INPI Resolution no. 244/2019 – division of trademark registrations and applications.

The division of an application/registration may take place in two situations: (i) when the examination of an application is suspended in one of the classes claimed (in a multi-class system), and (ii) for purposes of transfer of ownership of the application/registration.

In the first situation, the applicant may request the division of the application, which will lead to a new application for the classes in which it is possible to hand down a final decision on the registrability of the trademark in question.

Transfers will only be possible if they are in compliance with the requirements set forth in the Industrial Property Law – IPL, especially of Article 135 of that law which sets out that: “An assignment shall include all registrations or applications in the name of the assignee for identical or similar marks relating to a product or service that is identical, similar or related, on penalty of cancellation of the registrations or removal of the unassigned applications from the BTO’s active records”.

INPI Resolution No. 244/2019 also provides for the possibility of requesting the transfer of ownership of part of the goods or services contained in the specification of the same class of an application or registration. In any event, the transfer shall necessarily include identical, similar or related goods or services, under penalty of cancellation or removal of the original registration or application (Article 135) respectively.

The division will lead to a new trademark registration or application for the goods or services for which the transfer of ownership has been requested.

Finally, the BPTO also stipulated the following rules for the division of trademark applications and registrations:

— The request will be electronic, except in cases of prolonged unavailability of the system that could cause significant damage to the preservation of the rights of the owner(s); and

— The filing date and priority date (if applicable), and the period of validity of the original registration (if applicable) will be maintained for divided applications/registrations.

INPI Resolution no. 245/2019 – the co-ownership regime

The introduction of the co-ownership regime is very welcome, not least because the dynamism of corporate arrangements and their structures in many cases end up requiring the adoption of such a regime for financial and/or tax reasons, to name just a few examples.

In addition to being advantageous from a legal point of view, the co-ownership regime, as established in Resolution no. 245, was designed in order to facilitate the action of a group of owners before the BPTO, inasmuch as the expression of opinion of only one of the owners in various situations will be valid and will be to the benefit of the other owners, thereby reducing bureaucracy.

One of these situations concerns, for example, oppositions, requests for administrative nullity and forfeiture proceedings on the grounds of non-use, which will be admitted even when filed by only one of the co-owners of the registration or of the application.

Along the same lines, cancellation on the grounds of non-use will not occur, when at least one of the co-owners can prove genuine use of the mark. While in the case of legitimate reasons to justify non-use, proof of genuine use will be required from all co-owners.

The determination that the prior user rights to trademark registrations will be recognised deserves mention, with the legitimacy of only one of the joint owners being enough.

Co-owners enjoy the option of being represented either by a sole attorney or their respective attorneys, which also affords flexibility to the parties, especially in cases of conflicts of interest, when there is some disagreement between the co-owners.

In the case of transfer requests, however, the submission of authorisation by all co-owners is required for the assignment of the mark to be recorded. And this is for the best, since trademark assignment can involve the transfer of assets of enormous value to the assignee.

Resolution 244 will enter into force on October 2nd and co-ownership regime petitioning will only be made available on the e-INPI System from March 9th, 2020. Resolution 245 will only enter into force on March 9th, 2020.

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Ana Lúcia de Sousa Borda

Partner, Lawyer, Industrial Property Agent

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Rafaela Borges Walter Carneiro

Advogada, Agente da Propriedade Industrial

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Alvaro Loureiro Oliveira

Advogado, Agente da Propriedade Industrial

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Rafael Atab

Partner, Lawyer, Industrial Property Agent

Partner, Lawyer, Industrial Property Agent

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