November 25, 2020

Brazil introduces co-ownership of trademarks

The Brazilian Patent and Trademark Office (BPTO) has announced that trademark applications incorporating co-ownership of a mark will now be accepted. This right, which was previously available for patents, industrial designs, and copyrights, applies to new local trademark applications, as well as international applications designating Brazil, as of September 15, 2020.

The option of co-ownership will also apply to marks filed or granted prior to enforcement of the new legislation, which may obtain co-ownership by way of assignment. Partial assignment of a mark may also be facilitated through a divisional request, whereby an owner may assign defined aspects of the goods or services to a co-owner. Divisional requests became a possibility in March of this year by way of a separate resolution issued by the BPTO, and may now be utilised in order to obtain co-ownership of a mark as of September. It is worth noting that it will not be possible to co-own a collective mark.

In order to successfully obtain co-ownership of a trademark, the co-applicants or co-owners must be directly or indirectly engaged in commercial activity in relation to the claimed goods or services of the mark. It is important to note that Brazilian Trademark Law confirms that any identical or similar marks must be transferred to the exact same set of co-owners. This requirement therefore means that applicants must ensure that this is considered, as failure to do so may result in a previous mark without the exact same co-owners being considered a prior third party right and may subsequently void the new mark.

There are varying degrees of co-ownership accountability as a whole in relation to the use requirement. If an issue of non-use is raised, for example, an individual co-owner may present evidence to demonstrate use. However, in the case that legitimate reasons for non-use of the mark are set forth, all co-owners will be liable for justifying these reasons. Furthermore, whilst most actions, such as responses to office actions, should be filed jointly by the co-owners, any action by one co-owner in relation to oppositions, non-use cancellations and nullities will benefit all co-owners.

The introduction of co-ownership of a trademark in Brazil is testament to the ongoing modernisation of trademark legislation and procedure in the jurisdiction. It is hoped that continued improvement in the subject area will encourage further interest in filings, and increase intellectual property growth in Brazil.

Author: Danielle Carvey