Provisional Refusals Under the Madrid Protocol: Country by Country Guide – Brazil and Germany

By Moeller IP Team.

If you are looking to designate Brazil or Germany in your international trademark application, this article is perfect for you. Here, we shall cover the procedure relating to notification of provisional refusal by a pre-registered Brazilian or German TM holder who believes that your international trademark application would infringe on their pre-existing IP rights. Here, we will go over the procedures to go against such a notification and fight to protect your IP in Brazil and Germany.

Provisional Refusals Brazil

Brazil recently joined the Madrid Protocol in 2019, making it one of the newest members of the Madrid Union. In the Brazilian legal framework, the key law to be aware of is the Law on Industrial Property (9,279/1996), and the national TM office is the Brazilian Patent and Trademark Office (BPTO).

It should be noted that due to the nature of Brazil’s accession to the Madrid Protocol, if you already have an international trademark then you will not be able to simply designate Brazil as a new territory in which their brand is protected, but instead you will have to file a separate international registration from the beginning through the WIPO or choose to file a national application through the BPTO.

Therefore, if you have manoeuvred this system and have submitted your international trademark application, then that’s the first obstacle over and done with.

Once the BPTO has received the application, it will be published in their national bulletin, the Brazilian IP Gazette. From this date, any third party may file an opposition against the application within 60 days. The notice of opposition will then be published in the Brazilian IP Gazette around 60-90 days after the filing of the opposition.

At this point, all applicants should be aware that, unlike other members of the Madrid Union, Brazil does not publish any notice of opposition through WIPO channels – they will only be published on the Brazilian IP Gazette. Therefore, all applicants should be aware of the need to monitor the updates on the Gazette throughout the duration of the application procedure – we offer this service free of charge with any international trademark application.

The trademark applicant then has 60 days from the date of the publication of the notice of opposition to reply and reinforce their claim. Once submitted, the BPTO will examine the entire application, including any oppositions and counter statements to oppositions, and will publish a decision within 12-18 months. This is unlike many signatories to the Madrid Protocol, given that the BPTO does not make independent decisions specifically regarding oppositions. They take the application as a whole, including oppositions, and carry out a full analysis of the trademark application.

If the final outcome is unfavourable, it is good to know that all BPTO decisions are subject to appeal. Any party to the proceedings may make an appeal to the President of the BPTO within 60 days of publication of the decision in the Gazette. The President will then look over the application once more and within 6-8 months will give a decision on the appeal. This is a final decision and puts an end to the administrative proceedings.

If you need help with a trademark application or any other IP matter in Brazil, we’d love to help you out.

Provisional Refusals Germany

Germany is one of the most popular countries in Europe for trademark applications and has a similar procedure for provisional refusals under the Madrid Protocol as many of its European neighbors. The relevant national law is the Trade Mark Act, and the national TM office is the German Patent and Trade Mark Office (DPMO).

Once the application has been received by the DPMO, it will be published in the German Trade Mark Journal, from which date any preregistered TM holder will have 3 months to file an opposition (Form W 7202) and pay the corresponding fees – €250 plus €50 per extra opposing sign.

Once initiated, trademark opposition proceedings in Germany tend to be documentary proceedings consisting of one or two rounds of submissions from both parties, during which the opponent and applicant will make their claims, which if they are to have a strong chance of succeeding, must be well-structured and based on coherent legal arguments – these submissions ought to be redacted and revised by an experienced IP lawyer. Usually, there are no oral hearings at any stage of the opposition proceedings.

At the request of both parties, the DPMO will grant a cooling-off period, similar to the EUIPO in their provisional refusal proceedings, with a duration of 2 months in which the parties may attempt to come to an amicable settlement regarding their trademark dispute. If unsuccessful, the documentary rounds shall continue and the DPMO will give a decision within 12-18 months.

If the final decision of the DPMO ends up being unfavourable, it is still possible to make an appeal to the Federal Patent Court. Such an appeal must be filed in writing with the DPMO within 1 month of the publication of the decision. In this appeals process, a Board of Appeal shall be established that will dictate the proceedings.

The decision from this Board shall be final, unless in said final decision the Board allows for appeal on points of law. If you are able to make an appeal based on points of law, then you may have the chance to appeal to the Federal Court of Justice, however, this is under very limited circumstances – see Section 83 of the Trade Mark Act. Any decision from the Federal Court will be final and no further appeals would be permitted.

Due to the documentary nature of the German provisional refusal proceedings, it would be highly recommended to make good use of an experienced IP lawyer to assist you in the drafting of your submissions to the DPMO. If you have any doubts or would like assistance in any IP-related matter, let us know, and we can get the ball rolling right away.

Brazilian PTO and CAS Establish Technical Cooperation Agreement to Strengthen the Fight Against Patent Backlog

By Moeller IP Team.

BRPTO and CAS, a non-profit division of the American Chemical Society, signed a technical cooperation agreement (ACT) to expedite the examination of patents. ACT was published in the Federal Official Gazette this Wednesday (06/10). The agreement establishes INPI’s participation in a CAS Search Report pilot, with the objective of improving the patent workflow at the Institute.

The technology, which will be tested and optimized, is able to assess similarities with the state of the art from parameters of a patent application important for the examiner’s analysis. In addition, the system combines machine learning and data selected by humans, which improves the results offered.

Source: https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/inpi-e-cas-estabelecem-acordo-de-cooperacao-tecnica-para-reforcar-combate-ao-backlog-de-patentes

Brazil under WIPO’s Madrid Protocol

By Moeller IP Team. 

Dear Clients, Colleagues and Friends,

Moeller IP Advisors is happy to inform you that, for the first time, the Brazilian PTO has published, in its Official Bulletin, designations of International Registrations filed via the Madrid Protocol. This gives you the chance to not only file trademarks in the Brazilian national trademark office, but additionally enable the designation of your International Registrations through the WIPO’s Madrid System.

Sounds great, what’s the issue?
While the designation of a trademark application in Brazil has been made significantly easier, the Brazilian PTO has announced that any oppositions made against your trademark will not be published in the WIPO’s Gazette, but exclusively in the national trademark bulletin. This means that any trademark applications made through the Madrid System, and subject to oppositions by third parties, or an official rejection, will not be notified to the trademark holder via the WIPO Gazette but will have to be identified separately.

What’s our solution?
Moeller IP’s Brazil office will offer free monitoring of your trademark designations through the Madrid Protocol in Brazil and inform you of any activity. Any opposition or rejection against your (or your client’s) brand can additionally be handled by our experts on site.

Please feel free to contact us should you require more information.

Yours truly,

Moeller IP Advisors

New Appellation Of Origin in Brazil (DO)

By Moeller IP Brazil.

The Brazilian PTO published today (May 05th), in the Official Bulletin (RPI) nº 2574, the grant of the geographical indication (IG) “Campanha Gaúcha”, in the type of appellation of origin (DO), for fine white, rosé wines, red and sparkling wines. This is the seventh IG in the state of Rio Grande do Sul for the wine segment.

From now on, all wine producers who are within the demarcated region and follow the rules contained in the regulations for use – called the Technical Specifications Booklet – will be able to use IG in their products. This was granted on behalf of the Association of Fine Wine Producers of the Gaúcha Campaign.

The territorial delimitation of 44,365 km² covers municipalities or districts of: Aceguá, Barra do Quaraí, Candiota, Hulha Negra, Itaqui, Quaraí, Rosário do Sul, Santana do Livramento, Uruguaiana, Alegrete, Bagé, Piraí, José Otávio, Dom Pedrito, Ibaré , Maçambará, Bororé, Encruzilhada, Torquato Severo and Joca Tavares.

The first IG recognized in Brazil was the DO “Região dos Vinhos Verdes” for wines, granted on August 10, 1999. Currently, there are 77 records at the INPI, of which 56 are national (IP) indications and 21 are DO (12 national and nine foreign).

Source: http://www.inpi.gov.br/noticias/campanha-gaucha-ganha-indicacao-geografica-para-vinhos-e-espumantes/view)

BR PTO the Final Battle Against the Patent Backlog: Resolutions 240/2019 and 241/2019

By Vivianne Cardoso Banasiak, Client Relationship Manager

Solution against the patent blocklog

For years the BR PTO has struggled to reduce its patent backlog in order to process applications within reasonable timeframes. This is a long-standing problem and several measures have been introduced aiming to minimize the big delays. However, despite all the efforts, the patent backlog is still massive. An article summarizing all the actions taken by BR PTO against the patent backlog was recently published in our blog.

Resolutions 240/2019 and 241/2019

Nevertheless, on 7^th July, 2019, the Brazilian Patent Office (BR PTO) published in the Industrial Property Gazette (often referred to as RPI) what is expected to be the solution against the patent backlog: Resolutions 240/2019 and 241/2019. These Resolutions aim to optimize the technical examination proceeding of patent applications in Brazil and figure as part of the Government’s “Strategic Industrial Property Project” of reforming and reorganizing the current system established at the BR PTO.

The new Resolutions are based on an existing Resolution 227/2018, published on 30th October, 2018, which defines the pre-examination proceedings of patent applications using the results of prior art searches carried out by Patent Offices of other countries, of International or Regional Organizations, to expedite the technical examination proceeding conducted by the BR PTO.

In general terms, the difference between these two resolutions rests on the fact that Resolution 241/2019 regulates the simplification of technical procedures for examination of patent applications (pending a 1^st technical examination) by using the work already done by other patent offices in the world.

The Resolution 240/2019 regulates the examination procedures of patent applications (pending a 1^st technical examination) where no search has been performed by other patent offices in the world. For patent applications examined under the new Resolutions, the BR PTO will publish a pre-examination requirement under two new codes: 6.21 (for Resolution 241/2019); and 6.22 (for Resolution 240/2019).

Requirements for resolutions 240/2019 and 241/2019

The Resolutions are applicable to patent applications that fulfil the following requirements:

*ANVISA: Brazilian Health Regulatory Agency

Whether the patent application does not fulfill the requirements, such exclusion will also fall on its divisional applications.

Once the above-mentioned requirements are met, the BR PTO will publish the pre-examination requirement (codes 6.21 or 6.22) containing:

Under code 6.21:

• the search report with the prior art documents cited in the searches and/or technical examination carried out by Patent Offices of other countries, of International or Regional Organizations;
• a request to adjust the claim and/or present arguments related to the patentability requirements in light of the prior art documents.

Under code 6.22:

• the search report with the prior art documents: search carried out by Brazilian patent examiners;
• a request to adjust the claim and/or present arguments related to the patentability requirements in light of the prior art documents.

The applicant will have a period of 90 (ninety) days to fulfill the requirement of the pre-examination (reply filed under code 207). Otherwise, the patent application will be shelved.

Whether the new set of claims presented increases the number of claims submitted at the time of the examination request the fee for the examination request should be supplemented.

Regarding the patent applications under Resolution 240/2019, whether the search carried out by BR PTO returns only non-relevant documents, the patent will be granted and no pre-examination requirement (code 6.22) will be published.

The Resolutions 240/2019 and 241/2019 will enter in force on 01^st August, 2019 and on 22^nd July, 2019, respectively. The Resolution 227/2018 will be revoked on 22^nd July, 2019 by Resolution 241/2019.

Source: www.inpi.gov.br