January 6, 2023
Analysis Of Evidence Of Use Became More Thorough In The Forfeiture Procedure
On December 28, 2022, the Brazilian PTO published Technical Note no. 03.2022, updating the procedures for exam of forfeiture requests, originally regulated in 2018 through Technical Standard INPI/CPAPD No. 01/2018.
The forfeiture is one of the forms established by the Industrial Property Statue (LPI) for canceling the registration if the IP owner fails to demonstrate the use of mark. Registrations issued more than 5 (five) years are subject to forfeiture request, that can be requested by any concerned part with legitimate interest and the IP owner will have to demonstrate that the use has started and/or that the use has not been interrupted in the last 5 (five) years. It is also possible to justify the disuse for legitimate reasons.
The extensive updating details the criteria for analysis of forfeiture request and the documents that will be accepted as evidence of use, providing better guidance to the examiner and the parties. Among the improvements, it is worth mentioning:
1. Legitimate interest
The rule establishes that the demonstration of the legitimate interest should be made by the party requesting the forfeiture. The new update made it clear that the verification of the applicant’s legitimate interest in the forfeiture petition will be carried out by the Examiner responsible for analyzing the forfeiture petition.
2. Investigation period
According to the updating, the registration holder is not obliged to provide proof of use within the time interval contained in the first 5 (five) years of the concession – not yet subject to forfeiture.
3. Investigation and demonstration of use
The use of the mark must be:
- Compatible with its essential function of identifying the origin of goods or services.
- Public and effective, in relation to the goods or services for which the mark was registered. The use in the private sphere will not be considered capable of ruling out the forfeiture.
- Related to products or services that are effectively offered to the consumers. Preparation for use – development of labels, packaging, creation of visual identity – is considered internal use.
- The mark does not need to reach the final consumer. The use made in intermediary transactions that bring the product or service to consumers (distribution) is considered public.
- Although there is no minimum requirement on the amount of use, the number of documents must be consistent with the characteristics of the product or service in the respective market.
- The use of the trademark by at least one of the co-owners removes the forfeiture for all.
4. Types of evidence
To be accepted as evidence of use of a mark in a forfeiture proceeding, the documents must:
- Be issued by the registration holder or licensee, upon proof of licensing or authorization of use;
- Be dated within the investigation period;
- Refer to the mark as it was granted or with minor changes that do not modify its original distinctive character; and
- Feature the trademark as granted and identifying the goods or services as described in the certificate of registration.
5. Disuse for legitimate reasons
The Brazilian PTO will consider as legitimate reasons to justify the lack of use – and, thus, to rule out the forfeiture request – cases of force majeure and circumstances beyond the control of the holder, unpredictable and uncontrollable, such as the suspension of imports of inputs by government decision, the existence of a Judicial Action for Nullity of Registration or Administrative Nullity Proceedings.
For registrations in co-ownership, all co-owners must justify the disuse for legitimate reasons.
This updating represents an improvement towards the previous procedure, in which a single document could be accepted to rule out the forfeiture. The registration holder must be careful with the use of its marks registered for more than 5 (five) years, and in case of a forfeiture request, extensive evidence of public and effective use might be necessary within the investigation period to avoid the cancellation of the registration.
Forfeiture is a widely used strategy for canceling old registrations that are preventing the registration of new trademarks. If you find it difficult to register your trademark due to a previous registration by a third party, or if your registration expires, contact our team is ready to help with the matter via email@example.com.
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