TRADEMARKS - BRAZILIAN PTO
The Brazilian PTO recently issued two important news on its website, as mentioned in the paragraphs that follow.
Division of trademark applications/registrations
The PTO’s resolution ruling the division of trademark applications/registrations (Resolution 244, dated August 27, 2019) will not go into effect until July 01, 2021. Until then, there is no possibility of dividing trademark applications/registrations.
As a consequence, before the mentioned date, international multiclass applications cannot be divided in Brazil either. Thus, if an international mutliclass application is rejected before July 01, 2021, in one class, the applicant can file an appeal against the rejection decision issued in connection with that specific class, but the examination of the international application in all classes will only be resumed after a decision is rendered on the appeal.
The second news is that the trademark co-ownership will become available as of September 15, 2020. After that date, it will be possible to request the alteration of a trademark application /registration in the name of a single owner into an application/registration in the name of multiple owners, by means of a trademark assignmet.
With regard to trademark co-ownership, the following aspects should be observed:
- all trademark owners must declare that their activities are related to the goods/services covered by the trademark application/registration;
- there is no limit for the number of co-owners;
- existing trademark applications/registrations in the name of a single owner can be recorded in the name of multiple owners, upon the request for a recordal of a trademark assignment;
- for the purpose of trademark conflict analysis, if the trademark application being examined has a co-owner in common with a previously-registered or previously-filed mark, this will not be enough to avoid a conflict;
- if one of the co-owners submits evidence of use of a trademark which is under non-use cancellation proceedings, this will be sufficient to avoid the cancellation of the corresponding registration on the grounds of non-use;
- in order to justify the non-use of a trademark which is under non-use cancellation proceedings, all co-owners must submit their legitimate reasons for not having used the trademark;
- for trademark assignment purposes, all co-owners must submit their authorization, except in cases of judicial orders otherwise;
- in case of answers to oppositions, answers to office actions, answers to administrative nullity proceedings, and other types of answers, the corresponding briefs must be signed by all co-owners or their legal representatives. This will avoid of two or more conflicting answers; and
- oppositions, administrative nullity proceedings and non-use cancellation requests can be filed by one co-owner only.
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