Trademark Law No. 22.362 has been amended by Law No. 27.444 of May 30, 2018 which ratifies the presidential Decree No. 27/2018 of January 10, 2018.
As a consequence, the Trademark Office (INPI) has now issued Resolution P-183 which establishes the procedure, in relation with third parties oppositions against a trademark application. The resolution comes into effect on September 17, 2018.
The procedure established is as follows:
- A trademark application is published for opposition purposes (approximately 4/5 months as from filing). As from the date of publication a third party (with a legitimate interest) has a 30 day term (non extendable) to file an opposition. (There is no change here).
- As from the date of notification of the opposition, the applicant has a 3 month term to reach a settlement with the opponents;
- Upon the expiration of the 3 month term, and in case the opposition has not been amicably settled, the Trademark Office will notify the opponent and grant an non-extendible 15 working day term to pay a Trademark Office fee (today, approximately USD 315.00) and to file arguments and evidence in support of the opposition. If the Trademark Office fee is not paid, the Administrative Opposition Procedure will not be opened, in which case the opposition will be considered as an informal objection;
- Within the following 15 working days, the Trademark Office will notify the applicant of the oppositions that remain pending, granting an (non extendable) 15 working day term to file a response against each of the pending oppositions and to file evidence;
- The Trademark Office will then grant a (non-extendable) 40 working day term for both parties to produce evidence. As documentary evidence must be filed by the parties with their respective claim and responses, non documentary evidence must be produced during this 40 working day term. Once the evidence stage is completed, each party will have a 10 working day term to file final arguments;
- If a settlement is reached or if the case is settled through a mediation or conciliation, the parties must notify the Trademark Office. The terms of the settlement, however, do not oblige the Trademark Office;
- After this procedure, the Trademark Office will decide if the opposition is founded or ill founded. This decision may be appealed before the Federal Court of Appeals within a non-extendible 30 working day term.
Whilst Law No. 27.444, establishes that non use cancellation actions are to be decided by the Trademark Office, Resolution P-183 establishes that until the Trademark Office rules on the procedure of these actions, they shall continue to be handled by the Courts.
- The first to file system where priority is granted to the first to file and the rights are acquired by registration, is still in force;
- The burden of the opposition procedure is now on the opponent;
- The terms set, cannot be extended;
- Until a further ruling, cancellation actions (invalidity) and non-use cancellation actions are to be filed before the Courts, prior to which a compulsory pre-trial mediation must be completed.