BRPTO updates trademark’s forfeiture request procedures

BRPTO updates trademark’s forfeiture request procedures

Brazil’s Patent and Trademark Office (BRPTO) published, on December 28, 2022, the Technical Note 03/2022, which updates the procedures referring to trademark’s forfeiture procedures and changes the section 6.5 of the BRPTO’s Trademark Manual.

The new text of the trademark’s forfeiture section expanded and changed the content of several items in this procedure, mainly, regarding trademark’s proof of use, the legitimate interest of the forfeiture’s applicant and the nonuse for legitimate reasons. Some of the changes made to this section of the manual are highlighted below.

With regard to evidence of use, the new text expressly establishes that the trademark owner is exempt from proving the use or justifying the disuse of the trademark within the period of investigation that is contained in the first 5 (five) years of the grant of the trademark registration, but may to do so, if it is in his interest.

The manual expanded the information about the presentation of the proof of use documents, inserting, for example, instructions about digital documents and use on the internet, also, offering examples of documents not valid to prove the trademark’s use. The new text privileges the overall assessment of the documents presented, that is, all the circumstances and all the elements of each concrete case will be considered and evaluated in conjunction with each other.

Concerning to the alteration of the original distinctive character of the trademark, the new text indicates the elements that will be analyzed for this evaluation, significantly increasing the number of examples of alterations that would de-characterize the distinctiveness of the trademark.

The manual also offered examples of accepted and non-accepted reasons to legitimizing the disuse of the trademark. For example, actions and decisions under the responsibility of the trademark owner, reasons such as economic difficulties, among others, will not be accepted as valid reasons. Legal impediments, such as the suspension of the inputs and raw materials importation by government decision and the existence of actions questioning the validity of the trademark, were legitimate reasons indicated by the new text.

For further information, please access the link: https://www.gov.br/inpi/pt-br/servicos/marcas/arquivos/legislacao/NT_INPI_CPAPD_03_22.pdf