Thursday, 22 August 2013

Brazil: INPI revises its procedures for Recognition of Well-known Marks

On August 20, the Brazilian Instituto Nacional da Propiedade Industrial  (INPI) issued a new Resolution (Resolution No. 107/2013) which simplifies the procedures for obtaining the Decision of Recognition of Well-known Marks in Brazil.

According to the old rule, the Recognition of Well-known Marks could only be requested when opposing a third party application or when applying for the administrative nullity of a third party trade mark. In both circumstances, the high renown of a trade mark will be used to attack a third party application or registration. According to the new rule, you will be able to request the Recognition of Well-known Mark through an independent procedure designed just for this purpose.

Furthermore, the duration of the Well-known mark recognition was raised from 5 years (previous resolution) to 10 years. The decision about the recognition will be rendered by a group of INPI Trade Mark Department's members  and will be presided by the Director of the said Department.

Provisions such as what evidences should be submitted in order to support the recognition claim and the ones about the possibility of contesting the recognition remained widely unchanged. Regarding cases already requested (based in the previous rule but not yet ruled by August 20), the new Resolution states that a new request shall be made at the main file of the application/registration where well-known recognition is sought for. This request must be filed up within 90 days from the Resolution No. 107/2013 entering into force and no additional fees or submission of evidence will be necessary.

INPI shall issue some explanatory notes about the new procedure in the near future. The new rules shall come into force as soon as INPI includes the specific official fees for this service within their Schedule of Fees.

Post written by Roberto Carapeto (Brazilian attorney, currently studying at Waseda Universtity, Japan) 

More info at INPI.

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