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This February 26, 2019 entered into force Normative Instruction No. 95/2018 [NI 95/2018] published on December 28, 2018, which rules registration of … Brief comments on the new Normative Instruction regarding Geographical Indications

The Brazilian IP Law determines that use of a trademark must be initiated within 5 (five) years of the registration issuance date … New rules of the Brazilian Patent and Trademark Office for validation of evidence of use of trademarks in forfeiture proceedings

The Brazilian trademark registration system is attributive of rights. A registration issued by the Brazilian Patent and

Trademark Office entitles the owner with rights to use the trademark throughout the Brazilian territory, on an exclusive basis.

Managing IP Magazine – March 2013

Fame

Depending on the degree of reputation or recognition of the mark, it may be qualified as WELL-KNOWN or HIGLY REPUTED (widely recognized by the general consuming public; well-known to the public at large), being protected under different levels.

Legal protection to well-known marks

WELL-KNOWN marks in the form of Article 6bis of CUP are protected under the Brazilian IP Law against imitation or reproduction in the same or related market segment. Pre-existence of a regular application or registration is not a condition to seek the protection. Being this an exception to the first-to-file rule in force in Brazil, the Brazilian Law requires that the Opponent files an application for its own mark in order to enforce the special protection.

After a long period of darkness on this subject, the BPTO has just released an official communication on how the Coexistence Agreements shall be treated. The former BPTO’s Guidelines for the Analysis of Trademarks (issued in May/1997) formally admitted that Coexistence Agreements excluded the application of the norm contained in Section 124, item XIX, of the Brazilian IP Law, which prohibits the registration of marks that are identical or similar to another previously registered for the same or related goods or services, being susceptible of causing confusion or association with the senior mark.

Notwithstanding the fact that this guideline has lasted for over 13 years, it has always been refuted by the BPTO Attorneys’ Office, under the allegation that the Agreement by itself could never override that statutory prohibition. During the discussions for the revision of the BPTO’s Guidelines for the Analysis of Trademarks, which final version was released in December 2010, the BPTO Attorneys’ Office