The multiclass system for trademarks was supposed to become available in Brazil in March 2020. However, the PTO has published a notice on its website informing that due to issues related to its computerized processing system, multiclass applications will no longer be available as of that date. In view of the social distancing scenario resulting from the COVID-19 outbreak, we believe this situation should last for another period of time.
We would like to highlight a few aspects regarding this matter, according to the PTO’s Resolution that rules the registration of trademarks in the multiclass system.
The Brazilian PTO will examine the registrability of the trademark separately, in each class claimed. The examination of multiclass applications may result in the following decisions:
- allowance of the trademark application, whenever the trademark does not incur in a legal prohibition in any class;
- rejection of the trademark application, whenever the trademark incurs in a legal prohibition in all classes; or
- partial allowance of the application, whenever the trademark incurs in a legal prohibition in part of the classes or when there is an ex officio restriction or alteration in the specification of goods and services.
Furthermore, in cases where there are grounds to place the examination of the trademark application in abeyance, in one or more classes, the examination of the whole application will be placed in abeyance.
In cases of partial allowance of a trademark application, the PTO will indicate the classes in which the application is allowed, the classes in which the application is rejected and the ex officio restrictions or amendments in the specification of goods and services. An appeal can be filed against this decision.
It should be noted that the PTO will determine, ex officio, the necessary amendments to adequate the specification of goods/services to the International Classification of Goods and Services in the following cases (such amendments will be indicated in the publication in the Official Bulletin):
- whenever the entire specification can be allocated to another class;
- whenever the terms mentioned in the specification can be amended in such a way that they will become sufficiently clear and accurate.
We take this opportunity to stress that it is advisable to carry out searches before filing a multiclass application in Brazil, in all classes of interest. Also, specifications of goods/services should be submitted in the most accurate and clear manner in order to avoid office actions or amendments.
For more information about this matter, please do not hesitate to contact us at firstname.lastname@example.org.