On February 5, Daniel Law partner Andre Oliveira attended a meeting with the BPTO among other coordinators of the Trademark Committee of the Brazilian IP Association (ABPI). Along with his colleagues, Andre was able to address concerns related to the recently established rules for trademark non-use cancellation requests to the BPTO Trademark Director, Schmuell Lopes Catanhede.
While the recent rules provided more clarity on a few crucial items, such as the kind of evidence acceptable to overcome a cancellation request, one change proved to be controversial: according to the guidelines, the trademark owner is exempted from proving use of its registered trademark within the first 5-year period counted from registration.
This exemption period brought many questions: in case of a cancellation request filed on the first day after the 5-year period, would the TM owner be exempt from showing any use at all? Or, would the owner be forced to show use on the first day following the 5-year period? Would the scenario change if the cancellation request were filed within 1 week or 1 month from the exemption period?
At the meeting, the Trademark Director clarified that the purpose of the exemption period is to enable the TM owner to start use of its trademark within that period, but such use must take place in the worst-case scenario immediately after the 5-year term. In other words, if the cancellation request is filed on the first day after the 5-year term, the TM owner can maintain its registration by proving use: a) on the first day after the 5 years or b) at any time during the 5-year term. The benefit to the TM owner is that use for a single day will be accepted as valid evidence, even if not started within the first 5 years.
On the other hand, if for some reason the mark has not been at all used within the first 5 years and during the subsequent investigation term (counted back from the date of cancellation request), the 5-year exemption will not favor the TM owner and the registration will be cancelled, even if the request is promptly filed after the first 5 years of registration. In this scenario, the TM owner will not benefit from the exemption period.
We have seen an increase in the number of non-use cancellation requests after the new rules were released and will keep monitoring the BPTO’s decisions to ascertain that the above understandings will be followed. If you have any questions or would like to get more information, do not hesitate to get in touch with our team.
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