On January 17, 2023, the Brazilian Intellectual Property’s National Institute – “INPI”, a federal agency responsible for the intellectual property assets’ regulation, inspection and registration in Brazil – published the 6th revision to its Trademark Manual, which concentrates the procedural rules on the subject.
In relation to the previous edition, the updates promoted were:
(i) Registration request formulation: The specific models for Fulfillment of requirement, Opposition to application for trademark registration and Manifestation of application for trademark’s registration expiry were included as annexes to the Manual, providing greater clarity and understanding of the formal aspects required by the Autarchy;
(ii) Assignment for Ownership Transfer: Removed the obligation to present witnesses’ signatures in the Transfer request, concentrating the required data on the persons of the assignor(s) and assignee(s), in line with item 8.1 of the Manual;
(iii) Published Brand Registration Certificates’ availability: In accordance with the General Law on Access to Information, Brand Registration Certificates are now available to the general public through Search of the INPI Trademark Base, and no longer for holders and attorneys registered in the respective procedures only;
(iv) Proof of economic group’s existence: The requirements of the Autarchy to prove the existence of an economic group were reduced, being enough, from the update, the legal entities involved joint declaration. The template for such a declaration has been included as an annex to the Manual for better guidance to interested parties.
It is also worth highlighting that the Manual added the following observations: (a) the coincidence of partners does not configure, by itself, the existence of an economic group; and (b) the joint statement to be made for the recognition of an economic group must be included in each of the trademark registration applications, regardless of previously acquired trademark rights;
(v) Expiry examination procedures: This was the topic with greatest changes, including (a) withdrawal of the obligation to use the trademark sign for 5 years from the registration granting, with no further need for proof its use by the holder during this period, even if the expiry investigation period includes this time lapse – proof of use is required for the exceeding period only; (b) update of the list that distinguishes the documents that can prove the use of the trademark and those considered only as supplementary evidence; (c) detailing of brand use outside the concession limits’ hypotheses; (d) refinement of the possibilities for trademark sign disuse configuration, specifying cases of force majeure and situations not attributable to the holder; and (e) provision of a model for expressing an application for a trademark registration expiry, attached to the Manual.
Our team is available for additional clarifications, as well as to assist in matters related to national and international trademark registration.
Gustavo Flausino Coelho – gustavo@bastilhocoelho.com.br
Larissa Santos Bastos – larissa@bastilhocoelho.com