by Attilio Gorini
March 01, 2007
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The Brazilian Patent and Trademark Office-BPTO initiated, in the year 2006, a project to expedite the trademark prosecution with the objective of ending the backlog of 600 thousand applications and 5 years for the grant of the registrations. The BPTO’s intention is to reduce the time frame for the grant of registrations to no more than 18 months.
Among the several measures taken, it is important to highlight the simplification of the publication of the applications for the knowledge of third parties, the hiring of more personnel and the expedition of a few internal proceedings. However, the measure which called more attention and discussion was the complete substitution of the traditional paper applications by the applications made exclusively electronically.
The initiative is noble but the manner of implementation was at least controversial since the Office did not opt to maintain the two filing systems active for at least a transitional period, but rather to completely substitute the paper filing. The initial plan was to put the system in place until May 2006 but successive delays made it impossible and led the BPTO to publish several times the extension of the term for the exclusive use of the virtual system.
In the most recent extension for the complete substitution of the paper filing, the BPTO determined that it would occur on March 31st, 2007. Therefore, until that date, the two filing systems would coexist.
However, in January 2007, the Brazilian Association of Industrial Property Agents – ABAPI obtained a preliminary injunction in a court action filed on November 08, 2006. The 3rd Panel of the Federal Court of Appeals prohibited the mere substitution of the traditional filing system due to several reasons the most important of them being the fact that the electronic filing would restrict access to the trademark system to those with internet access, thus hurting the Federal Constitution.
As a matter of fact, the simultaneous maintenance of the two systems, as it occurs in the United States and in the European Union would have two main objectives: to guarantee full access to the trademark filing system and to allow the user to become acquainted to the on-line system which, it is important to remark, is not as user friendly as the BPTO claims it is.
There are no doubts that there exists great interest in the adoption of an efficient virtual system and the best way to guarantee such objective is to allow the users to become used to the new tool, which will occur much more naturally if they are absolutely sure that, if a problem arises, the traditional system will be there as a backup to guarantee their rights.