New regulations for disclaimers in Brazilian trademark registrations
The Brazilian Intellectual Property Office (INPI) has issued a series of new regulations (the last of which is No. 166/2016, published on May 31, 2016), which the disclaimers in connection to trademarks were changed.
Up until May 31, 2016, when a trademark had a term, or an element that was considered to be generic, common, or not registrable, INPI would insert a disclaimer in the certificate, that specified which elements were considered as generic, and could therefore be used by others.
Now, the new disclaimer will be as follows:
“The protection conferred by this registration abides by the limits provided for in article 124, items II, VI, VIII, XVIII and XXI, of IPL.”
That is, the limit to protection will follow these parameters:
“II – letter, numeral and date, on an isolated basis, except where they are sufficiently distinctive;
“IV – name or initials of an entity or public agency, where the very entity or public agency has not applied for registration;
“VIII – colors and their names, except where they are distinctively or peculiarly displayed or combined;
“XVIII – technical term used in the industry, in science and art, which relates to the product or service to be distinguished; and
“XXI – necessary, common or ordinary shape of the product or its container, or a shape that cannot be dissociated from its technical effect.”
This means that each trademark won’t have a specific disclaimer, but rather the same one for them all. This may bring conflicts since no one would be absolutely certain of the exact limitation of their registration, and which is specifically the term or element that is not of exclusive use for the right owner.
INPI authorities have stated that these disclaimers do not change the nature of trademark registrations, since it is the law that states these limitations and not the disclaimer per se. This means the disclaimers were merely declaratory, and did not constitute the right itself, which was determined by law, and only explained by the disclaimer.
This measure, somewhat controversial, is aimed at alleviating the severe backlog that the INPI is currently facing, as it will help certificates to be issued faster. Moreover, many appeals and other litigations could be avoided, since many applicants would therefore appeal the granting resolution when it had a disclaimer. This appeal was not originally included in the Brazilian Trademark’s Act, but was a praetorian construction originated in the belief that the granting of an application with a disclaimer was a “partial rejection”.
However, and despite the promises that the aforementioned conflicts will diminish, there may be an increase in the amount of judicial actions originated on these disclaimers, since the right owners are likely to put up a fight in order to prove the extension of their rights.
Nevertheless, these conflicts would be judicial, and not administrative, and consequently the terms for the granting of trademarks and all administrative appeals should diminish, hence alleviating INPI’s backlog.
The original text of Resolution 166/2016 can be accessed in the Official Gazette No. 2369 through this link.