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Exercising Prior User Rights

by José Antonio B. L. Faria Correa

March 01, 2009

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The current Industrial Property Law, in effect since May 15, 1996, introduced the concept of prior user rights to registration favoring one who, in good faith, had been using the mark in Brazilian territory for at least six months prior to the date that a conflicting application was filed by another party.

The law does not specify when this right actually takes effect. This hole has churned questioning as to whether prior use claims can be made at any stage of the administrative process, in the form of opposition upon publication of a conflicting application, or in the form of nullity proceedings when the disputed registration is granted. For the same reason, debate continues as to whether prior use claims may be made in only courts of law.

Moreover, the law does not establish as a condition for exercising prior user rights that the disputed mark be filed; the provision regarding prerequisites for opposition (Article 158, Paragraph 2) does not address the matter, although it does explicitly state that filing is a requirement for invoking the benefits of Articles 124, item XXIII, and 126.

With regards to the first issue noted above, Brazil’s doctrine and jurisprudence do contain arguments that support both of the theses: that prior user rights may be invoked at any time, and that this may only take place in the opposition phase. However, invocation of this right at any time finds solid ground in the lawmaker’s omission of a specific time. Clearly, this complex issue may best be avoided by exercising this right in parallel to an opposition.

Regarding the second issue, we consider that an a completudineargument corks the hole and settles the matter. The Brazilian law adopted, in principle, the assignment of mark ownership upon granting of registration; recognition of rights based on prior use in Brazilian territory constitutes an exception to normalize any distortions arising from this system. The right recognized is for preference to registration, and its inclusion in the law is precisely to allow that ownership be granted whoever exercises it, as the prior user. In other words, recognition of prior use is nothing more than assigning registration ownership to the one who verifiably used the mark as described by law.

The matter is the focus of debate among domestic associations, such as the Brazilian Intellectual Property Association (ABPI), which proposes discussion of the matter with the BPTO. 

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José Antonio B. L. Faria Correa

Advogado, Agente da Propriedade Industrial

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