Brazil has joined in Madrid Protocol for almost 1-year, however, the key procedures regarding the registration of trademark still pending, including multiple-classes system, divisional application or registration and common ownership system.
15th September 2020, Brazilian Patent and Trademark Office declare to apply the common ownership system to the national trademark application and registration, this means, the office has taken a major step towards full implementation of “Madrid Protocol”.
For adopting these new measures, the trademark office must make some adjustment, to consider legality, priority demands, action on cancellation of the trademark due to non-use, as well as transfer of rights.
Considering the mentioned above, trademark practitioners should remember following important factors when they handle trademarks’ application and registration under Brazilian common ownership system:
Trademark owner needs to act.
All owners of a trademark shall file declarations and replies to the Review Comments. However, only one owner will be required to submit relevant documents to the trademark office for the opposition, procedure of administrative invalidity and procedure of cancelling non-use trademark.
As per regulations of Brazilian Trademark Law, the applicant must declare that the businesses related to the applied-for-trademark’s designated goods and services should be legally and effectively conducted. In the course of application or registration of trademarks related to the common ownership, all owners of the trademarks must engage in compatible activity, moreover, all conditions must be met when the trademark is transferred.
Regarding applications for trademarks claim priority under the common ownership system, all owners of the trademark must be the same with all owners of overseas application or registration. If not, owners must file documents of transferring priority right to Brazilian trademark office. Otherwise, the authority may give the notice to require adopting such kind of measures.
If owner of applications or registrations of similar or identical prior trademarks were different from owners of applied-for-trademarks under the review (even though partial owners are identical), then, the application or registration of the similar or identical prior trademark will be regarded as one of major barrier against the application of current trademark.
Procedure of cancelling non-use trademark
Under the common ownership system, if someone posed the request to cancel the non-use trademark against the registration of a trademark, then, only one owner of the trademark can provide the certificate for the use.
However, If the trademark is not been used by the owner because of justified grounds, then, all owners of the trademark should prove the grounds is reasonable, otherwise, the trademark shall be cancelled.
Owners could be added or deleted in the course of application or registration of the trademark through filing the application of transferring.
Moreover, the transfer applications regarding the application and registration of trademarks under the common ownership system, the applicant should be the corresponding relationship with the owner of the trademark. If the transferee is not included in the supporting documents of transferring, then, Brazilian trademark office will notify the applicant to make proper adjustment.
It’s worth noting that, the transferring should be performed under the authorization of all owners of the trademark, furthermore, the authorization should contain all qualifications of owners, their signatures or their lawyer’s signature.
Brazilian trademark office does not stipulate the limitation on the quantity of common owners.
The performance, advantage and disadvantage of Brazilian trademark common ownership system remain to be discovered. However, this new system means a quite improvement for Brazil, it makes a major step forward to fully implement Madrid Protocol.