Brazilian Trademark Office incorporates updates to International Classification of Goods And Services (“Nice”) for Trademark Registration

On February 15th, the Brazilian Trademark Office (BPTO) published its latest Classification of Goods and Services list to reflect the revisions implemented by the 12^th edition of the International Classification of Goods and Services (“Nice Classification”) issued by the World Intellectual Property Organization (WIPO).

The BPTO Classification brought some new features among which we highlight the following:

• inclusion of non-fungible tokens (NFTs) in the list of goods for international class 9, with the wording “Downloadable digital files authenticated by non-fungible tokens [NFTs]”; and
• new wording in the goods for international class 9 to include “crypto asset” and no longer only “cryptocurrency” in the description of software/computer programs for managing transactions of such assets, with the language “Downloadable computer software for managing crypto asset transactions using blockchain technology”[1].

These changes show the relevance that the new technologies associated with the so-called Web 3.0 industry have for the global market in general and for the growing concern among companies and individuals that seek to ensure protection of their brands in the new digital environment.

By adopting the 12th Nice Classification, the BPTO follows a similar path taken by other important trademark offices worldwide. For example, the European Union Intellectual Property Office (EUIPO) has announced that it would also adopt the 12th edition of the Nice Classification even though it would require applicants to further state the content to which the virtual goods relate (e.g. “downloadable virtual goods, namely, virtual clothing”). The publication of the adoption of the 12th edition of the Nice Classification by EUIPO is expected to happen in the first semester of 2023[2]. So far, BPTO has not indicated whether it will make a similar requirement

Just like every new edition of the Nice Classification, no changes or updates are required for the pending trademark applications filed before the publication of the latest Classification of Goods and Services by the BPTO. In other words, trademark applications filed after February 15, 2023 already reflect the 12th edition, while applications filed before the new edition came into effect will continue to be analyzed within the scope of the previous edition under which they were originally filed

Please reach out to our TM Filings team if you would like to learn more about the matter. Furthermore, please feel free to contact our Marketing & Entertainment Law team if you have any questions or would like to discuss about your Web 3.0 related projects.

[1] Text of the 11th edition of the International Classification of Goods and Services – “Downloadable computer software for managing cryptocurrency transactions using blockchain technology.”

[2] Available at: https://euipo.europa.eu/ohimportal/en/web/guest/search-result/-/asset_publisher/ulIGpHCvzv7c/content/pt-virtual-goods-non-fungible-tokens-and-the-metaverse. Last seen: 03/21/2023.