by Rodrigo Borges Carneiro
June 01, 2006
During two meetings in the beginning of April the Brazilian Trademark Office has divulged its plans to attack the current frustrating backlog of approximately 600.000 (six hundred thousand applications) waiting examination.
The situation has deteriorated in the last ten years due to a lack of investment and scarce human resources. On top of that, some inadequate measures taken by the BPTO in the last years such as the abrupt adoption of the International Trademark Classification System in 2000 without a transition period contributed to the current point where an application has been taking an average of 5 years to become a registration.
In order to overcome this significant backlog the Brazilian Trademark Office devised a plan which is centered on the hiring of 124 new examiners combined with a series of measures to speed up examination.
The first significant measure was the determination that the analysis of trademark applications filed prior to the year 2000 would occur with the use of the old Brazilian Classification System. The same classification system is now being used for renewals filed after January 2000 and that have not yet been decided.
In addition, oppositions are now published almost instantaneously. In order to achieve that, the BPTO only publishes the essential data required for the applicant to know that an objection has been raised.
Inside the BPTO, the analysis of all files is now being made electronically, without a physical file and the goal is to move to a paperless office and speed up the proceedings as the docketing and physical management of the files were singled out as major causes of the delay.
The BPTO officially announced that, by the end of May, 2006, all trademark applications will have to be filed online only. Currently, we only have paper applications but the BPTO intends to change that scenario. Specifications of the system that will be used are sketchy at best at the date of this article. This abrupt and radical change may have its shortcomings and our firm has been fighting for the BPTO to allow paper filing along with electronic filing for at least a transitional period.
Another announcement was that the BPTO intends to completely eliminate paper filings by October, 2006. All motions would be filed only electronically, including their exhibits.
By the same date, the BPTO plans to simplify the assignment process by allowing it to be done by means of a single motion. According to the BPTO, recordation of changes of address will be made directly by the applicant’s attorney-of-record with an online system. Renewals and payment of the ten-year protection fees would be made simply by the payment of the corresponding fees and the delivery of the certificate of registration would be made electronically.
Also by the end of 2006, the idea is to implement the multi-class filing system. There is no word yet on the number of classes that will be allowed in a single application or the fees per class.
According to the BPTO, these changes will mean that, by the end of 2006, the backlog of trademark applications should be completely resolved and that the whole process should not take more than 18 months.
Undoubtedly, these changes, if implemented correctly and if properly maintained, should yield very good results and put Brazil back on track for a stronger and more efficient protection of IP rights. Our firm is dedicated to helping the BPTO and we will keep you duly posted on any further developments on this important matter.