TRADEMARKS - IMPORTANT UPDATES REGARDING THE EXAMINATION OF NON-USE CANCELLATION PROCEEDINGS
In the end of December 2022, the Brazilian PTO published Technical Note No. 03/2022, relating to updated guidelines for the examination of non-use cancellation proceedings.
Technical Note No. 03/2022 comprises detailed information on the examination of non-use cancellation proceedings, maintaining the guidelines that have been adopted so far and including new and detailed topics on other aspects that are also taken into consideration by the Brazilian PTO.
A summary of the main updates is indicated in the paragraphs that follow:
- The owner of the trademark registration is not obliged to evidence use of the mark in the interval comprising the intersection between the first 5 years from the registration date and the period under investigation. In other words, it is necessary to submit proof of use of the mark during the period between the end of the first 5 years of the registration grant date and the end of the investigated period.
- Use of the mark must be public and effective, which means that use within a private sphere on a strictly internal level of a company shall not be considered public use of the mark.
- Upon analyzing the effective use of a trademark, the PTO will consider the nature of the goods/services identified, the characteristics of the market to which such goods/services belong and the extension and frequency of use. As a consequence, depending on such peculiar aspects, it is not always mandatory to submit a large number of documents attesting to use of the mark.
- In addition to fiscal documents, other materials can be accepted as evidence of use of the mark, as long as they are dated and indicate the mark and the goods/services commercialized. Examples of additional materials that can be accepted are images of products, packages, wrappers, containers, tags, stickers, catalogues, leaflets, manuals and advertising materials.
- Use of the mark on the Internet can be accepted, but certain requirements must be met, such as the corresponding images or pages must be dated and clearly demonstrate the mark and the goods/services covered by the registration. If the images or pages were obtained from a foreign website, it is necessary to translate them into Portuguese and to prove the commercialization or import of the goods/services in Brazil.
- With regard to alterations of the original distinctive character of the trademark under non-use cancellation proceedings, the Technical Note contains detailed examples of the types of change that represent or that do not represent an alteration of the distinctive character: addition of word elements, addition of device elements, withdrawal of elements of the trademark, change in the stylization of letters, change/update/modernization of device elements of a device mark and inversion of word elements.
- With regard to the justification of non-use of a trademark under non-use cancellation proceedings, the Brazilian PTO explains, in the Technical Note under reference, that certain arguments will not be accepted as legtimate grounds not to use the mark, such as reorganization of the company which owns the trademark, financial crisis of the trademark owner, disputes between the company’s partners and dissolution of the company. On the other hand, financial or commercial problems of the trademark owner related to periods of economic recession, may be claimed to explain the submission of a reduced number of documents attesting to use of the mark within the investigated period, although such arguments are not considered legitimate reason to justify the lack of use of the mark.