by Rodrigo Borges Carneiro
September 01, 2016
Contributor: Conrado Vieites Novaes de Freitas
Verifier: Rodrigo Borges Carneiro, Dannemann Siemsen Bigler & Ipanema Moreira, Rio de Janeiro, Brazil
INTA Bulletins Law & Practice—Latin America Subcommittee
On June 1, 2016, Resolution No. 166/2016, issued by the National Institute of Industrial Property, came into force, setting out new rules regarding trademark disclaimers in Brazil.
The resolution establishes that all trademark registrations will be issued containing the following standard disclaimer: “the protection conferred by this registration is limited by article 124, paragraphs II, VI, VIII, XVIII and XXI, of Law No. 9.279, of May 14, 1996.” The paragraphs contained in the default disclaimer refer to legal impediments based on lack of distinctiveness, such as paragraph VI, which deals with the prohibition against the registration of colors and their denominations unless displayed or combined in a peculiar and distinctive fashion.
Before this resolution, the National Institute of Industrial Property (INPI) had issued different types of disclaimers for each case, which might explain, for instance, that the mark was being granted with protection as a whole or that a certain part or element of the mark remained free.
The standard disclaimer now adopted will not contain an explanation from INPI as to which part has been protected and what has been left out. It will also not contain any indication of which specific legal impediment was considered by the examiner.
All future registrations as well as applications granted as of February 23, 2016, which had the corresponding certificates of registration still pending at the date of entry into force of the resolution, will receive the standard disclaimer. Certificates of renewal and official copies of old certificates will also feature the default disclaimer.
INPI indicated on the resolution that the standard disclaimer is expected to expedite the examination of trademark applications and create consistency in future disclaimers issued by the Office.
However, there may also be downsides. The number of conflicts brought before INPI and before judicial courts may dramatically increase, since there will be space for a wide range of interpretations regarding the scope of protection conferred by the registrations.
Some critics have stated that INPI has transferred to the judiciary its duty of examining the elements that deserve protection in a given mark when issuing the appropriate disclaimers, which is prohibited by the Brazilian legal system, on both constitutional and infra-constitutional levels.
The market and IP practitioners will have to adjust their practices and, where there is a lack of clarity, resort to the judiciary.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.