Trademark Disuse: Understanding the Expiration Criteria in Brazil
In the field of intellectual property, the disuse of a registered trademark can lead to its forfeiture. This concept, although crucial, is often misunderstood by trademark holders. Brazil's National Institute of Industrial Property (“BPTO”), along with legal doctrine, has established specific criteria to define what constitutes “disuse”. This article explores these definitions and encourages a broader discussion about their implications.
What constitutes disuse?
BPTO criteria
The BPTO defines disuse as the lack of use of the trademark in commerce for a continuous period of five years after its grant or last use. This includes not only the absence of goods or services under the trademark on the market, but also the lack of promotion or any commercial activity that keeps the trademark alive in consumers' minds. Importantly, the law allows for forfeiture to be requested by interested third parties or ex officio by the BPTO itself.
Doctrinal view
Legal doctrine broadens this view somewhat, emphasizing that the use of the trademark must be substantial and not merely symbolic. This means that sporadic promotional activities or superficial attempts to keep the trademark on the market may not be enough to avoid forfeiture. The doctrine also considers the owner's intention to keep the trademark active as a relevant factor, arguing that disuse must be involuntary for forfeiture to be avoided.
Implications of disuse
The disuse of a trademark not only exposes the owner to the risk of losing the registration, but also opens up space for new competitors to occupy the market niche previously protected by the trademark. Furthermore, once the trademark has been declared invalid, the original owner loses exclusivity over the commercial use of the trademark and may face direct competition under the same visual or word identity. A clear understanding of the criteria for disuse is vital for trademark owners, especially those facing commercial or market challenges that may prevent continued use of the mark. We encourage further discussion on this topic to clarify doubts and help trademark owners successfully navigate the complexities associated with maintaining their intellectual property rights.
We invite practitioners, academics and entrepreneurs to join us in this vital discussion.
