BPTO’s System Starts to Accept Co-Ownership Regime In Brazil From September 15, 2020

On September 8, 2020, the Board of Trademarks, Industrial Designs and Geographical Indications of the Brazilian Patent and Trademark Office (“BPTO”) informed that the trademark co-ownership regime will be accepted by the system from September 15, 2020.

Below, we highlight some important points of the co-ownership regime:

• The declaration of activity must be related to all co-owners;
• There will be no limit on the number of co-owners;
• In cases of a forfeiture request, it will be sufficient that only one of the co-owners prove the use of the trademark for defense purposes. However, if the defense is carried out and there are legitimate reasons for not using the trademark, all co-owners must present their reasons;
• Trademark transfers will only be carried out with the authorization of all co-owners; and
• Statements and responses in compliance with office requirements must be signed by all co-owners, however, oppositions, forfeiture requests and administrative nullities can be submitted by only one of the co-owners.

It should also be noted that, during the examination of applications for registration under a co-ownership regime, prior or other existing applications in the name of one of the co-owners may be considered as an obstacle.

To overcome such obstacle, the prior application indicated as an obstacle must be in the name of all co-owners.

It is also worth mentioning that, in order to qualify for the discounts provided for in the BPTO Services Compensation Table, all co-owners must meet the established criteria.

Demarest’s Intellectual Property and Innovation team is available to provide further information or clarification on this matter.