03-16-2016 (Newsletter Issue 5/16)
Design Registration Certificates Only Electronically
On February 23, 2016, the Brazilian National Institute of Industrial Property (INPI) informed that the industrial design registration certificates are available only in an electronic format. Issuing of paper certificates are no longer possible.
Additionally, INPI has published on its website more than 7,200 documents with respect to granted certificates issued between 2014 and 2015. Thus, INPI provides now an online system covering the whole process for industrial design protection.
The issuance of industrial design registration certificates in electronic format is regulated by INPI Resolution 159/2016, published in the Industrial Property Gazette No. 2355.
Source: Moeller IP Advisors, Argentina
02-02-2016 (Newsletter Issue 2/16)
Accession to Hague Apostille Convention
On December 2, 2015, Brazil deposited its instrument of accession to the Hague Convention of October 5, 1961 Abolishing the Requirement of Legalisation for Foreign Public Documents (the "Apostille Convention").
Following the usual procedural steps, the Convention will enter into force for Brazil on August 14, 2016, making it the 111th Contracting State to the Convention.
Pursuant to Article 12 of the Apostille Convention the Depositary shall give notice to the Contracting States of the accession of Brazil.
02-02-2016 (Newsletter Issue 2/16)
Industrial Design Applications Accelerated
Since December 2015, the Brazilian Institute of Industrial Property (INPI) is accelerating the examination of industrial design applications by means of Regulations No. 44 and 45/2015.
The first change is aimed at lowering the technical requirements for industrial design applications, especially lowering the number of requests for corrections made by the INPI. Additionally, INPI will change ex officio the title of the application when it is deemed incorrect.
The second main change is directed to the formal examination. From now on, the INPI will focus only on the examination of the figures filed by the applicant of the industrial design. This change will last at first for two years.
In Brazil, once an application is filed, INPI conducts only a formal examination, but not a substantive examination in order to assess if the industrial design is new and original. Therefore, since a substantive examination is not compulsory during the registration proceedings, the owner of an industrial design may request immediately after the grant of the registration a Merits Examination (“exame do mérito”) where INPI will examine if the design is original and new.
According to Regulation No. 45/2015, the approximate number of pending industrial design applications in November 2015 was 13,550. During 2015, 6,039 industrial design applications were filed with INPI (according to INPI statistics).
Source: Moeller IP Advisors, Argentina and www.inpi.gov.br
05-13-2015 (Newsletter Issue 7/15)Electronic System for Industrial Designs LaunchedOn April 7, 2015, the Brazilian PTO (INPI) published in the Official Gazette Resolution 146/2015 that an electronic system for the online filing of industrial designs has been established. This new online service offers discounts on service fees.
For more details on how to use the new electronic system for industrial designs, please check the User Guide (only in Portuguese available).
Source: Moeller IP Advisors, Argentina
03-18-2015 (Newsletter Issue 4/15)
Trademark Application Backlog Reduced
The Brazilian Industrial Property Institute (INPI) could decrease the backlog of trademark applications for the first time in four years. This enhancement of examination capability at INPI Trademark Department was due to improvements in two critical areas: human resources and information technology.
So increased INPI the number of trademark examiners from 66 to 102, reaching the highest number in the history.
Further, the Office improved its information technology. The consolidation of IT systems contributed to both, the 19% increase of examiners productivity and the improvement of management tools in the Trademark Department.
Before, the average growth rate of the backlog was 22% per year from 2010 to 2013.
Source: www.inpi.gov.br, Moeller IP Advisors, Argentina
01-13-2015 (Newsletter Issue 1/15)
New Trademark Examination Guidelines
On December 9, 2014, the Brazilian Patent and Trademark Office (BPTO) published Resolution No. 142/2014 ("Resolution") in its Official Gazette, No. 2292. The Resolution consolidates various trademark regulatory sources focused on the application of the provisions of Brazilian Intellectual Property Law (Law No. 9.279/96 – BIPL) and establishes a new Trademark Examination Guidelines Manual ("Manual"), which revokes the current guidelines as well as Resolutions Nos. 027/2013, 028/2013, 032/2013 and Normative Instruction No. 001/2013.
The objective of the Resolution is to guarantee quality, transparency and uniformity in trademark analysis, and facilitate the dialogue between the examination and appeal procedures.
Among several changes, under the new Manual, it is now possible to modify a trademark application after it has been filled in cases of error, and new procedures have been introduced, especially regarding the substantive examination of applications, creating specific guidelines for assessing the distinctiveness of certain designs allowing for the registration of a combination of previously registered marks in which the word element cannot be registered, and of commonly used terms when combined, forming a distinctive trademark.
Requests that contain reproduction or imitation of a geographical indication shall not be automatically refused; instead, requirements for the registry shall be presented by the BPTO and met by the applicant. The same procedure shall be applied when applications contain elements that cannot be registered, allowing the applicant to modify such element.
According to the Manual, in cancellation proceedings, the legitimate interest of the applicant and fiscal and printed notes as evidence shall be evaluated. If there is trademark collision, the existence of annotations regarding trademark terms shall not automatically prevent the evaluation of any confusion.
Source: Tauil & Chequer Advogados, Brazil
10-28-2014 (Newsletter Issue 16/14)
Issuance of Electronic Certification
Resolution No. 136/2014, which refers to electronic certificate of registration was approved by the BPTO and became effective on 30 September 2014.
Pursuant this new resolution, all certificates of registration will be issued, exclusively, in digital format, upon electronic signature of the Certification Authority.
This new rule is also valid for pending certificates of registrations, duplicates and renewal certificates.
Therefore, as of 30 September 2014 on, all Certificate of registrations issued in digital format will be available on the BPTO’s website, through protected password and under its control and monitoring.
Source: Di Blasi, Parente & Associates, Brazil
04-16-2014 (Newsletter Issue 7/14)Official Trademark Fees ChangedThe Brazilian PTO has changed its official fees through the Resolutions Nos. 126 of 6 March 2014 and 129 of 10 March 2014. The main changes concern the increase for paper filings and reductions for online services rendered to entities that have different treatment according to the Brazilian Law under certain conditions.
The official fee for a trademark application is now BRL 530.00 for paper filing. A discounted fee of BRL 212.00 is under certain conditions possible.
The official fee for online trademark applications remains the same with BRL 355.00. A discounted fee of BRL 142.00 is under certain conditions is possible.
Source: Lia e Barbosa Sociedade de Advogados, Brazil and Assef e Moschetta Advogados, Brazil
04-16-2014 (Newsletter Issue 7/14)Change of Practice of Highly Renowned TrademarksAccording to Resolution 107/2013, which came into effect 11 March, 2014, it is now possible to request the recognition of a highly renowned trademark before the Brazilian PTO through an autonomous proceeding. Previously, the highly renowned trademark recognition was only possible incidentally, for instance in an opposition or trademark cancellation.
The request of a highly renowned trademark in Brazil must follow rules of the Law and has several details. One of them is an extensive market research/survey that proves that the mark is renowned. As a rule, the validity of the registration is of 10 years. After this period a new request of recognition must be filed. The recognition is dependent of a trademark registration and its validity/expiration.
The official fees for the request of highly renowned trademark recognition are BRL 37,575.00 online and BRL 41,330.00 in paper.
Source: Lia e Barbosa Sociedade de Advogados, Brazil and M. J. Zanon, IP Lawyer, Brazil
09-17-2013 (Newsletter Issue 13/13)Recognition of Well-known Marks RevisedThe Brazilian Patent and Trademark Office (INPI) published a the Resolution No. 107/2013, on 20 August 2013. It simplifies the process of obtaining recognition as famous or well-known Trademark. The request can be done autonomously to the Institute. It no longer has to be based on proceedings against applications for allegedly infringing marks.
Further, the duration of the recognition as a well-known mark was raised from 5 years (previous resolution) to 10 years.
Resolution no. 107 will come into force as soon as the fees for the service are fixed. Pending requests for recognition as a well-known mark will be required to be confirmed by the respective trademark owners.
For further information, please also check the article of Ms Ana Lúcia de Sousa Borda, Dannemann Siemsen Advogados here
Source: www.inpi.gov.br and Dannemann Siemsen Advogados, Brazil
09-27-2012 (Newsletter Issue 14/12)
Similar and Generic Veterinary Medicines Introduced
The Law No. 12.689/2012 introduces two new modalities of veterinary medicines: the similar and the generic ones. The Law is effective as of October 17, 2012.
The similar and generic veterinary medicines can only be produced after the expiration of the patent of the reference veterinary medicine, so as not to infringe the rights of the patent owner, whether a product or a process.
Similar veterinary medicines must bear the owner's trade name or the trademark and should contain the same active principle, pharmaceutical concentration and form as the reference medicine.
Generic veterinary medicines must be designated by the Brazilian Common Denomination (DCB) or by the International Nonproprietary Name (DCI). They must contain the same active ingredient, concentration and form, administration, dosage and therapeutic indication as the reference medicine. Bioequivalence to the reference medicine, its efficacy and safety must be demonstrated by means of pharmaceutical studies with the Ministry of Agriculture, Livestock and Supply (MAPA).
Rights that may not be protected by a patent, but which allow the exclusive ownership, such as those that grant the exclusive right to use the clinical trials and related dossiers (data protection) provided by Brazilian Law 10,603/2002, should be taken into consideration, for they could eventually delay the launching of some similar and generic veterinary medicine in the market.
MAPA shall shortly publish an ordinance in order to regulate the simplified proceeding of registration of the generic veterinary medicines.
Source: Di Blasi, Parente & Associates, Brazil,
Moeller IP Advisors, Argentina
09-27-2012 (Newsletter Issue 14/12)
New Rules on TM Coexistence Agreements
On August 21, 2012, the BPTO published a Normative Legal Opinion (INPI/CPAPD 001/2012) consolidating the view that coexistence agreements are to be taken into consideration as an element for the analysis of applications. While the examiners will not be bound by the consent of the owners of the blocking marks and may therefore reject or confirm the rejection of applications if they consider the marks involved as conflicting, the evidence of a consent will constitute a valuable argument to avoid or challenge a rejection.
This Normative Legal Opinion also contemplates the possibility for the examiners to raise office actions inviting the applicants to adjust the list of products or services envisioned or even introduce modifications in the marks themselves so as to permit their coexistence with the earlier marks cited as obstacles.
This Normative Legal Opinion became effective as of its publication.
Source: Annemann Siemen Bigler & Ipanema Moreira, Brazil
09-02-2012 (Newsletter Issue 13/12)
Code for Numbering Changed
The BPTO has adopted a new numbering code that meets International standards as of the beginning of 2012.
The final number of the applications will be given at the time of the protocol, enabling the holder’s effective monitoring.
The new numbering follows the following standards:
BR ZZ XXXX YYYYYY K
BR = Code of country (Brazil)
ZZ = Nature of protection
XXXX = Year of filing at BPO
YYYYYY = Number related to the order of filing of applications
K = Check digit of the number of application
The numbers related to the nature of protection as applied as follow:
ZZ = 10 for first filing or applications claiming foreign priority under Paris Union Convention;
ZZ = 11 for entering into the Brazilian national phase of PCT applications;
ZZ = 12 for divisional patent applications; and
ZZ = 13 for certificates of addition.
ZZ = 20 for first filing or applications claiming foreign priority under Paris Union Convention;
ZZ = 21 for entering into the Brazilian national phase of PCT applications; and
ZZ = 22 for divisional applications
ZZ = 30 for Industrial Design Application;
ZZ = 31 for applications filed under International Treaties; and
ZZ = 32 for divisional applications.
ZZ = 40 for Indication of Source application;
ZZ = 41 for Designation of Origin applications; and
ZZ = 42 for applications filed under International Treaties; and
ZZ = 43 for divisional applications.
Patent Applications, Utility Models, Industrial Designs and Geographical Indication filed until 31 December 2011 shall not be renumbered.
Source: Moeller IP Advisors, Argentina
01-23-2012 (Newsletter Issue 1/12)E-Tracking of ApplicationsThe Brazilian Patent and Trademark Office (INPI) announced a new software system to speed up and simplify the processing of trademark applications made in paper.
Applicants can track the status of their application ectronically through the entire procedure. Any formal requirements will be published in the Journal of Industrial Property (Revista da Propriedade Industrial), available on INPI’s Portal. The deadline to comply with those formal requirements is five days. If all requirements are fulfilled, the request goes to the technical examination.
For more information, please click hereSource: www.inpi.gov.br
12-05-2011 (Newsletter Issue 14/11)Official Fees to Increase in 2012The Brazilian Patent and Trademark Office (INPI) annouced an average increase of 18.5 % in its official fees including the trademark application fees effective from January 2012.
The official application fees per trademark will be BRL 475.00 (approx. EUR 190.00) in case of paper filing, respectively BRL 355.00 (approx. EUR 143.00) per trademark when filed electronically.
To access the schedule of fees, please click here
Source: www.inpi.gov.br and M.J. Zanon, IP Lawyer, Brazil
10-01-2011 (Newsletter Issue 11/11)
New Version of Electronic Filing System
The Brazilian Trademark Office has recently announced a new enhanced version of the Brazilian Trademark Electronic Filing System (e-marcas 2.0), to be launched on October 3rd, 2011.
The new version is expected to enable a more secure environment (digital certification) for users and a more user-friendly interface with applicants, also helping reduce impaired functioning, which may occur in the current version.
The use of the new system is expected to contribute to the increasing number of applications, which is likely to reach 150,000 this year – a substantial increase of 15% when compared to 2010.
The new version shall also enable the implementation of multiclass applications and co-ownership of trademark registrations, which are relevant steps for the implementation of the Madrid Protocol.
Source: Veirano Advogados, Brazil
04-20-2011 (Newsletter Issue 7/11)
INPI Website Available in English Now
The first page of the official website of the Brazilian National Institute of Industrial Property (INPI) is in English now available.
Source: César A. Leão Barcellos & Cia.Ltd., Brazil
10-08-2009 (Newsletter Issue 3/09)
New Official Fees Bring Important Adjustments
The Brazilian National Institute of Industrial Property (INPI) has made relevant alterations in its official fees, including for trademarks, effective June 1, 2009. The adjustments' aim is to raise funds for its ongoing restructuring and the training of trademark examiners.
The adjustments correspond to a 17 percent overall increase for trademarks. This is even lower than the rate of inflation experienced in Brazil since the INPI’s last fee increase, which was in 2003.
The new schedule of fees clearly stimulates interest in the electronic filing system: Several fees for online services are now, on average, 25 percent cheaper compared to fees for paper filings for the same services. The new fee schedule increases the discount on all official fees charged to small companies, individuals, nonprofit and public entities, to 60 percent from 50 percent.
Legal basis is the new Industrial Property Law, in force since May 15th, 1997. Although Brazil is part of the Paris Convention and the TRIPS agreement, it is not part of the Madrid system.
Trademark protection is obtained by registration. Very limited rights derive from earlier use in commerce and special protection is afforded to well-known marks.
Registrable as a trademark are all distinctive and visually perceivable signs, such as words, names, acronyms, letters, numbers, devices, combination of colors, three-dimensional forms and any combination of the mentioned signs.
The following trademark types are registrable: trade marks, service marks, collective marks and certification marks. They can be presented as word, figurative, combined (word + figure/logo) and three dimensional marks.
The application if filed at the Brazilian Patent and Trademark Office (BPTO).
A separate application has to be filed for each class.
Foreign applicants need a local agent or lawyer. The local representative must be authorized to state that applicant is engaged in the field of commerce or industry related to the products or services claimed in the application.
A simply signed power of attorney suffices for all trademark filings in the name of the same owner.
Foreign applicants do not need a domestic registration nor domestic company incorporation.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. The processing time from first filing to registration is approx. 3 years.
Prior to registration, the trademark application is published approx. 4 months after the application date in the weekly gazette “Revista da Propriedade Industrial” (RPI).
A trademark registration is valid for 10 years from the date of registration.
The registration is renewable for periods of 10 years.