Trademark Disuse and Expiration: Understanding the INPI's Criteria and Legal Doctrine
One of the most delicate issues in trademark law is forfeiture due to disuse. In Brazil, the National Institute of Industrial Property (INPI) establishes specific criteria to determine when a trademark can be considered to be in disuse, which can eventually lead to its forfeiture. This article discusses the concept of disuse as defined by the INPI and relevant legal doctrines, illuminating the implications for trademark holders.
The Concept of Disuse
Brazilian legislation, more precisely the Industrial Property Law (Law No. 9.279/96), defines that a trademark must be effectively used within the national territory. Disuse occurs when a trademark is not used for a continuous period of five years after its grant, or when use is interrupted for the same period. However, the concept of use goes beyond the mere application of the trademark to products or services; it involves the trademark remaining in the consumer's mind as an indication of origin.
BPTO criteria
According to the BPTO, disuse is assessed not only by the physical absence of the product on the market, but also by the lack of advertising or any other form of presence on the market that indicates to the public that the brand is active. This means that marketing and advertising actions can be considered as use of the trademark, even if the production and sale of products is temporarily suspended.
Doctrinal perspectives
Jurists and intellectual property experts often debate what actually constitutes use of the trademark in a way that avoids forfeiture. The doctrine generally agrees that the use must be real, serious and consistent, not merely symbolic or sporadic. In addition, the use must be public and non-confidential, and capable of generating or maintaining an association in the consumer's mind between the product and the trademark.
Implications of disuse
The expiry of a trademark due to disuse is not automatic. It must be preceded by an administrative process at the INPI, in which the owner has the opportunity to demonstrate use of the trademark or justify the reason for its non-use. Legitimate reasons for discontinuing use, such as serious economic problems or legal issues, can be considered to avoid forfeiture.
The disuse of a registered trademark is a complex issue that requires owners to pay constant attention to how their trademarks are perceived and kept active in the market. Understanding INPI criteria and doctrinal interpretations is crucial to any trademark management strategy, ensuring that intellectual property rights remain protected and valid over time.
