INPI decision clarifies when a preferential right to registration can be claimed

Brazil’s Industrial Property Law (9,279/96) does not explicitly limit when a claim to the preferential right to registration of a trademark can be made. While there are two conditions under which this can be claimed, until recently, the timescale was unclear.

The preferential right to registration of a trademark is regulated by Article 129(1) of the law:

“Article 129. The ownership of a trademark is granted by a validly issued registration, in accordance with the provisions of this Statute, the holder being guaranteed exclusive use thereof throughout the national territory, without prejudice to the provisions of Articles 147 and 148 with respect to collective and certification trademarks. Paragraph 1. Any person who in good faith was using an identical or similar mark for at least 6 (six) months prior to the date of priority or of the application in the Country, to distinguish or certify a product or service that is identical, similar or the like, will have preferential right to registration.  Paragraph 2. The preferential right can only be assigned, by transfer or leasing, together with the business of a company, or part thereof, that has a direct relation to the use of the trademark.”

The federal attorney of the Brazilian Patent and Trademark Office’s reached a decision (Opinion 43/21) on 3 November 2021 (Official Gazette 2652), based on the latest Federal case law. This established that a preferential right to registration can be challenged not only when filing an opposition (ie, until the grant of a trademark registration), but also during an administrative nullity procedure.

Brazilian trademark regulation establishes the preferential right to registration as an exception to the first-to-file rule concerning trademark registrations, which applies under two conditions. The identical or similar mark must have been used, first, in good faith and, second, have been claimed at least six months prior to the date of priority, or of the application to distinguish an identical or similar product or service.

Previously, the law did not specify the circumstances in which such a claim should be made. Beginning in 2009, the INPI has applied the understanding that such a right can only be claimed until the registration of a trademark, by means of an administrative opposition filed within 60 days of the application’s publication. Hence, once the deadline to file an opposition expired and the trademark registration was granted, the good-faith use of the concerned trademark cannot be claimed any more. Both doctrine and case law presented conflicting interpretations of the subject. Fortunately, this situation has now been clarified.

INPI’s recent decision was based on the fact that there is no express limitation in the Industrial Property Law regarding the moment to claim the preferential right to registration based on Article 129(1). Moreover, Article 168, which establishes the administrative nullity procedure, does not limit the content of the nullity claim, meaning that it is possible to contend any of the nullity causes provided in law.