Following the conclusion of public consultations, the National Institute of Industrial Property – INPI published in editions 2539 and 2540 of the Industrial Property Magazine four new resolutions that alter the forms of processing trademark applications. These amendments aim to align national procedures with international ones due to Brazil’s accession to the protocol, relating to the Madrid Agreement concerning the international registration of trademarks.
Resolution no. 244: division of registration or trademark applications. From its effective date, the registration request may be divided for the purposes of transference of title. Part or all of the same class of products or services may be transferred and should include identical or similar products or services, under penalty of cancellation or filing of the registration or original order. The date of filing and the priority of the original registration or order, where applicable, and the period of validity of the original registration, will be maintained after the division. In the event of the examination being overwritten in the registration application, the applicant may request its division, which will lead to a new trademark registration application. This resolution will enter into effectivity on March 9, 2020.
Resolution no. 245: co-ownership. From its effective date, registering more than one proprietor or applicant per trademark registration or application will be permitted. INPI’s publications of registrations must identify all proprietors or applicants, who will effectively and lawfully pursue activity relating to the claimed products or services, either directly or through companies that they control directly/indirectly. All acts of the parties, relating to the trademark, must be performed by all proprietors, except for occasional exceptions. Foreign proprietors should have attorneys that live in country with administrative and judicial representation powers. If there is co-ownership, there is no expiration of the trademark when at least one of the co-owners proves its use. This resolution will take effect on October 2, 2019.
Resolution no. 247: trademark registration under the Madrid Protocol. Procedures for individuals or legal entities are defined so that they are able to file applications for international trademark registration directly with the INPI and for individuals or legal entities to register trademarks in Brazil, deriving from local requests. Among other definitions, it establishes that the date of international registration will be the date on which the application is submitted to the INPI, provided that it has been received by the WIPO International Secretariat within 2 months. After this period, the effective date will be the date of receipt of the request by the International Bureau. This resolution will take effect on October 2, 2019.
Resolution no. 248: trademark registration in a multiclass system. From its effective date, this resolution will allow the filing of trademark applications for related products and services in more than one class. This specification should be informed upon registration. Specifically, it determines that the trademark will be analyzed separately in each class, and an examination of the registration application may result in approval, rejection or partial approval, depending on whether the trademark is prohibited in all or part of the classes. The petition for this type of registration will be available from as of March 9, 2020.
