New rule on the devolutive effect in the analysis of appeals against the refusal of trademark registration: what changes

On December 12, 2023, the Brazilian PTO published (BPTO) Opinion 17/2003/CGPI/PFE-INPI/PGF/AGU in response to the inquiry submitted by the General Coordination of Resources and Administrative Nullity Processes regarding aspects of the devolutive effect in appeals (Article 212, § 1 of the Brazilian Industrial Property Law) that involve the refusal of trademark applications.

The analysis was divided into two main scenarios. The first scenario involves refusals of trademark applications on the grounds of a prior registration that is subject to a forfeiture request (cancellation due to lack of use). In this case, could the BPTO suspend the appeal until the final decision on the forfeiture request?

The Attorney General’s Office concluded that there is no legal obligation to suspend the analysis of the appeal until a final decision of the forfeiture request, nor is there a prohibition on such suspension. Therefore, the BPTO may, at its own discretion, to suspend the analysis of the appeal.

The second scenario pertains to applications that did not face opposition but had their registration denied due to intrinsic aspects of the mark, such as lack of lawfulness, distinctiveness, and/or accuracy, without an examination of the sign’s availability concerning third-party rights. If, during the appeal analysis, the Second Instance examiner is convinced that there is no reason to uphold the rejection based on these characteristics, should they conduct searches for prior third-party marks, or should the case be returned to the First Instance for a reassessment in this regard?

The Attorney General’s Office concluded that ideally the case should be sent back to the First Instance for a new evaluation of the mark’s availability concerning third-party rights. However, it considered the possibility of a definitive analysis of the merits by the Second Instance, taking into account the principle of reasonable duration of proceedings.

In a brief summary, in both scenarios, the decision regarding (i) the suspension of the appeal analysis until the final decision on forfeiture and (ii) the Second Instance examination of the availability of the mark in cases where the rejection decision is overturned based on distinctiveness, lawfulness, and/or accuracy of the sign, has been left to the discretion of the BPTO. It remains to be seen whether the BPTO will adopt a consistent stance on these matters or if the decision regarding such aspects will be at the discretion of each examiner.

This opinion has the force of a regulation, through a decision published on the same date by the President of INPI, Julio Cesar Castelo Branco Reis Moreira, and will come into effect starting from February 2024.

If your case falls under one of these scenarios, or if you would like more information on the matter, please contact our Technical Team at mail@kasznarleonardos.com.

P.S.: The devolutive effect of an appeal is the fact that the filing of the appeal transfers the right and duty to review and decide the dispute (within the limits of the challenge) to the senior judge. Source: LK-Lötscher, 11.05.2020.