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Hot Topics in IP during 2023: Trademark Highlights

In practical terms, the analysis of position marks has been more rigorous than other types of trademarks, and the numbers speak by themselves.

By Clarissa Jaegger and Luana Muniz de Barros, partners at Montaury Pimenta, Machado & Vieira de Mello.

i) Position Marks

Position marks were implemented by our country in 2021, and in November 2022 the proper prosecution and examination finally started at the Brazilian Trademark Office.

Indeed, there was a huge expectation that, in 2023, the Brazilian TM Office would start issuing approvals and refusals, involving Position Mark applications, consolidating this non-traditional sign in our system.

However, in practical terms, the analysis of position marks has been more rigorous than other types of trademarks, and the numbers speak by themselves: in January 2024, there were 310 applications for position marks at the Brazilian TM Office database, 50 of them were subject to an office action and 60 were rejected by the Brazilian TM Office, the others remain pending examination.

However, only one trademark registration was granted by the Brazilian TM Office after 13 years from its filing date.

The good news is that the technical reports related to the office actions and unfavorable decisions issued by the examiners are extremely detailed and consistent, which gives us a better understanding of the documents and information required by the Brazilian TM Office to obtain the registration for a position trademark in our country.

ii) Non-Use Cancellation Action

The new edition of the Brazilian Trademark Office Examination Guidelines, published on January 17, 2023, brought a new understanding of the timeframe to submit evidence of use of a trademark, when subject to a non-use cancellation action.

Up until now, the common understanding was that the owner of the challenged registration should present evidence comprising five years from the filing date of the non-use cancellation action, even if this period somehow comprised the first five years of the registration.

Please see the data below for a better example:

Date of Registration: January 1, 2015
Vulnerable to non-use cancellation actions on: January 2, 2020
Date of filing of the non-use cancellation action: January 2, 2023
Period of Proof: January 2, 2018 to January 2, 2023

The new interpretation says that if it is not mandatory to use the registration for the first five years, then these should not be included in the period. So, if we look at the same example, the evidence should then comprise the following timeframe.

Date of Registration: January 1, 2015
Vulnerable to non-use cancellation actions on: January 2, 2020
Date of filing of the non-use cancellation action: January 2, 2023
Period of Proof: January 2, 2020 to January 2, 2023

This new comprehension assures the owner of a registration for five years guaranteed to start using the mark in the Brazilian territory.

Finally, we think that this modification does not affect when the lack of use of the mark is justified by the registrant due to legitimate reasons, as stipulated in Article 143, paragraph I of the Brazilian Industrial Property Law (No. 9279/1996).

iii) Geographical Indications

With the allowance of new geographical indications, Brazil has now reached the mark of 109 registered GIs, representing an increase of 60% compared to 2019.