THE PRESIDENT OF THE INPI, within the scope of his prerogatives, and

CONSIDERING the need to adequate the procedures presently in effect in the field of trademarks to the new legal provisions included in Law No. 9.279/96;

CONSIDERING the ever increasing need to include the Country within the context of economic internationalization, where products and services have, in the mark symbols, their primary instance of identification and selection, in the market;

CONSIDERING, finally, the importance of swiftness and security, for the users of the system, regarding administrative actions within the trademark scope,

DECIDES:

I. To establish rules of procedure for registration of trademarks, by the establishment of the following rules:

1– PRIORITY

1.1 The right assured by the Paris Union Convention, or in other treaties, regarding filing priority, is provided in Article 127 of the IPL and should be exercised within the delay of 06 (six) months of the filing date of the earliest priority, in the case of the Paris Union Convention, or as provided in the applicable treaty.

1.2 The priority claim shall be made in the act of filing of the application for registration, and may be the object to additions within 60 (sixty) days, from the day immediately following the filing day.

1.3 The priority claim being required upon filing, or added within the delay of 60 (sixty) days, as provided in Item 1.2, shall be evidenced by a proper document from the origin, containing the number, the date and a copy of the application or the registration, accompanied by a free translation of the document, within up to 04 (four) months of the date of filing.

1.4 If the priority was obtained through an assignment, there should be submitted, together with the priority document, the corresponding assignment document or the statement of assignment, together with a free translation of the same, consular legalization thereof being excused.

1.5 The formalities of the document of assignment of the priority right shall be those provided in the law of the country where it will have been executed.

1.6 The priority claim does not exempt the application from being subject to the legal devices included in the IPL, where applicable.

2– APPLICATION FOR REGISTRATION

2.1.1 – filing form, as per form Model I, established by Normative Act No. 132/97, in the Portuguese language, executed by the applicant or by an attorney of the same;

2.1.2 – prints, in the case of a design trademark or composite trademark, in two or three dimensions, with due regard to the quantities and the specifications defined in the User’s Guide.

2.1.3 – evidence of payment of the filing fee;

2.1.4 – power of attorney, if the interested party does not effect the filing in person;

2.1.5 – documents concerning the priority claim, if applicable;

2.1.6 – Utilization Rules, in the case of a collective mark;

2.1.7 – description of the characteristics of the product or service and of the control measures, in the case of a certification trademark;

2.1.8 – free translation of the documents in foreign language, consular legalization thereof being excused;

2.1.9 – search card for design trademark, as per Model VII, established in Normative Act No. 132/97, with due regard to the quantity and the specifications defined in the User’s Guide, in the case of a design trademark or composite trademark, in two or three dimensions.

2.1.10 – brief description of the essential characteristics embodying the three-dimensional trademark, submitting drawings of the figure in front view, side view, top plan view, bottom plan view and perspective view, if applicable.

2.2 – Each application for registration of a trademark should point out one single class, and may comprise up to 03 (three) codes for products/services within the class indicated, in the form of the Classification of Products and Services presently in force.

2.3– When not instructing the application for registration upon the filing thereof, the following documents may be submitted within 60 (sixty) days, counted from the day immediately following the filing day, regardless of notice or official requirement from the part of the INPI, subject to definitive shelving of the application for registration:

2.3.1– power of attorney;

2.3.2– Rules of Utilization, in the case of a collective mark;

2.3.3– description of the characteristics of the product or service and of the control measures, in the case of a certification trademark;

2.3.4– free translation of the documents in foreign language, consular legalization thereof being excused.

3– DOCKETING OF THE APPLICATION FOR REGISTRATION

3.1– The application for registration shall be the object of a formal preliminary examination upon its submission to the INPI, which shall merely verify the submission of the following documents:

3.1.1– filing form as per Model I;

3.1.2– prints, if applicable;

3.1.3– evidence of payment of the filing fee;

3.2– At the time of the formal preliminary examination, the INPI shall effect the necessary requirements, including those regarding additional payment of fees having eventually been collected in insufficient amount, to be complied with by the applicant within 05 (five) days, subject to the application for registration being deemed nonexistent.

4– EXAMINATION OF THE APPLICATION FOR REGISTRATION

4.10– From the publication of the decision allowing the application for registration, which may not be appealed (Article 212, § 2nd. of the IPL), there shall ensue a delay of 60 (sixty) days for the applicant to submit evidence of payment of the fee corresponding to the issuance of the Registration Certificate and the first period of ten years of protection of effectiveness thereof, by means of submission of a form, as per Model II, established in Normative Act No. 132/97, in the Portuguese language, executed by the applicant or by an attorney of the same.

4.11– The submission of evidence of payment of the fees corresponding to the issuance of the Registration Certificate and to the fist ten years of protection of effectiveness thereof, if not made within the delay mentioned in Item 4.10, may be made within the delay of 30 (thirty) days, being counted from the day immediately subsequent to the day of expiry of the term established in the cited Item, regardless of notice or official requirement from the part of the INPI.

4.12– Upon submission of evidence of payment of the fees referred in the preceding Items, there shall be published the granting of the registration. The date of this publication shall be the date of the respective Registration Certificate, wherefore shall ensue the ten-year protection term.

4.13– There being no submission of evidence of payment of the corresponding fees within the delays referred in the preceding Items, the application shall be definitively shelved, thereby closing the administrative stage.

5– APPEAL OF REJECTION OF AN APPLICATION FOR REGISTRATION

5.1– A decision rejecting an application for registration is appealable, within the delay of 60 (sixty) days of the date of the respective publication.

5.2– An appeal shall not be accepted if:

5.2.1– it is filed outside of the legal delay;

5.10– Upon submission of evidence of payment of the fees referred in the preceding Items, there shall be published the granting of the registration. The date of this publication shall be the date of the respective Registration Certificate, wherefore shall ensue the ten-year protection term.

5.11– There being no evidence of payment of the corresponding fees within the delays referred in the preceding Items, the application shall be definitively shelved, thereby closing the administrative stage.

6– DESISTANCE FROM AN APPLICATION FOR REGISTRATION

6.1– The desistance from an application for registration may be presented at any time before the date of publication of the allowance thereof and should be instructed with the following documents:

6.1.1– filing form as per Model II, established in Normative Act No. 132/97, in the Portuguese language, executed by the applicant or by an attorney of the same;

6.1.2– power of attorney with specific powers for the practice of the action, in the case where the interested party does not effect the submission in person and has not granted those powers to his/her attorney at the time of filing of the application for registration.

7– ADMINISTRATIVE PROCEEDINGS OF NULLITY

7.1– The administrative proceedings of nullity may be instituted by the INPI or on request of a legitimately concerned person, and it may be presented through a petition, as per Model II, established in Normative Act No. 132/97.

7.2– The administrative proceedings for nullity of a registration shall not be accepted if:

7.2.2– not accompanied by evidence of payment of the corresponding fee, except when instituted ex officio by the INPI;

7.2.3– not legally founded;

7.2.4– requested by a person without legitimate concern;

7.2.5– based on Insert XXIII of Article 124 or Article 126 of the IPL, the party requesting nullity failing to evidence having filed the application for registration of his trademark at the INPI, within the delay of 60 (sixty) days of the day immediately following the day of submission of the administrative nullity request, regardless of notice or official requirement from the part of the INPI;

7.2.6– based on § 1st. of Article 129 of the IPL, the nullity requester fails to evidence the filing of the application for registration of his/her trademark at the INPI;

7.2.7– based on Article 125 of the IPL, it is not accompanied by the due evidence of notoriety, together with evidence of payment of the specific fee for this administrative nullity request.

7.3– The request for institution of administrative nullity proceedings being found to be appropriate, the holder of the registration shall be notified, by means of publication, to submit a statement of reply within the delay of 60 (sixty) days of the referred publication.

7.4– Upon expiry of the term established in Item 7.3, even if no statement is presented and even if the registration is extinct, the administrative nullity proceedings shall be examined and decided.

7.6– There being found to exist, at the time of the examination, a temporary impediment for the decision of the administrative nullity proceedings, there shall be published the forbearance of the examination thereof, identifying the object of impediment.

7.7– Upon conclusion of examination of the administrative nullity proceedings, there shall be published a decision, maintaining the registration or declaring the nullity thereof, total or partial.

7.8– The decision issuing on an administrative nullity proceeding shall terminate the administrative stage in respect thereof.

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9.1– A decision rejecting an application for renewal of effectiveness of a registration may be appealed, within the delay of 60 (sixty) days of the date of the respective publication.

9.2– The appeal shall not be accepted if:

9.2.1– it is filed outside of the legal delay;

9.2.2– it is not accompanied by evidence of payment of the corresponding fee;

9.2.3– it is not provided with legal foundation;

9.4– If the appeal is found appropriate, the same shall be published, and thereafter shall be examined by the INPI, which shall decide upon the maintenance of the appealed decision or the reversal of the same.

10– ASSIGNMENT OF RIGHTS

10.1– The application for recording of the assignment should be instructed with the following documents:

10.1.1– filing form, as per Model II, established in Normative Act No. 132/97, in the Portuguese language, executed by the assignee or by an attorney of the same;

10.1.2– evidence of payment of the corresponding fee;

10.1.3– a document evidencing the assignment, which should include the complete qualification of the assignor, of the assignee and witnesses, the powers of representation of the executors of the assignment, the number of the application or the registration, the trademark being assigned and the date when the document was executed;

10.1.4– a document evidencing the assignment of priority, if applicable;

10.1.5– power of attorney, if applicable;

10.1.6– free translation of the documents in foreign language, consular legalization thereof being dispensed;

10.1.7– original certificate or a certified duplicate thereof, or a copy of the form requesting the latter, or yet, a declaration to the effect that the same is being requested, in the case of assignment of a registration.

10.2– The assignment may be evidenced by any adequate document demonstrating the transfer of ownership of the application or registration of the trademark, such as an incorporation, a split, a merger, legitimate or testamentary succession or judicial decision.

10.3– The INPI shall record the assignment, expliciting the complete qualification of the assignee, and shall publish the same, so as to produce effects regarding third parties.

10.4– In the case of assignment of registration of a trademark being in the phase of examination for renewal, the new Certificate shall be issued already in the name of the assignee.

10.5– The decision rejecting the recording of an assignment or canceling a registration or shelving an application may be appealed, in the terms of Article 135 of the IPL, within the delay of 60 (sixty) days of the respective publication, which decision shall terminate the administrative stage.

11– CHANGE OF NAME, HEAD OFFICE OR ADDRESS

11.1– The application for recording a change of name, head office or address of the applicant or holder should be instructed with the following documents:

11.1.1– filing form, as per Model II, established in Normative Act No. 132/97, in the Portuguese language, executed by the applicant or by an attorney of the same;

11.1.2– indication of the changes having occurred;

11.1.3– numeric list of the applications and/or registrations to be altered;

11.1.4– evidence of payment of the corresponding fee;

11.1.5– power of attorney, if applicable;

11.1.6– original certificate or certified duplicate thereof, or a copy of the form requesting the latter, or yet, a declaration that the same is in the process of being requested, in the case of a registration.

11.4– The INPI shall also record any limitation or burden that may fall upon the application for registration or the registration, by means of specific submission of evidence, and shall have the same published, in order that it may be effective concerning third parties.

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12.1.4 – power of attorney, if applicable.

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13.1.2 – evidence of payment of the corresponding fee;

12.1.3 – power of attorney, if applicable.

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14.1.1 – filing form, as per form Model II, established by Normative Act No. 132/97, in the Portuguese language, executed by the applicant or by an attorney of the same;

14.1.2 – evidence of payment of the corresponding fee;

14.1.3 – power of attorney, if applicable.

15– REQUEST OF PHOTOCOPY

15.1.1 – filing form, as per form Model V, established by Normative Act No. 132/97, in the Portuguese language, executed by the applicant or by an attorney of the same;

15.1.2 – evidence of payment of the corresponding preliminary fee;

16– POWER OF ATTORNEY

16.4– The power of attorney including powers in the terms of Article 217 of the IPL, when not instructing the application for registration, may be required by the INPI at any time, including after extinction of the registration, and in such case, should be submitted within the delay of 60 (sixty) days of publication of the official requirement.

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17.5– Upon delivery of the photocopies referred in the foregoing Item, the interested party may submit, within the delay which will having been granted thereto by the INPI, additional arguments by means of a petition, exempt from payment of fees, together with a copy of the request of photocopy, bearing the date when the request was attended to.

18– EXTINCTION OF REGISTRATION DUE TO EXPIRY OF THE TERM OF EFFECTIVENESS

 18.1– Upon expiry of the term of effectiveness of the registration, without the competent renewal having been requested, there shall be published the extinction thereof.

19– EXTINCTION OF REGISTRATION DUE TO WAIVER

19.1.1 – filing form, as per form Model II, established by Normative Act No. 132/97, in the Portuguese language, executed by the applicant or by an attorney of the same;

19.1.2 – power of attorney with special powers of waiver, if applicable;

19.1.3 – documents evidencing the qualification and the powers of the person executing the waiver request, in the case of a business entity;

19.2– In the case of a collective mark, the waiver shall only be accepted when requested in the terms of the articles of incorporation or the by-laws of the entity itself, or in accordance with the utilization rules.

PROVISIONS OF ARTICLE 217

20.1– Upon verifying the absence of power of attorney as provided in Article 217 of the IPL, the INPI may formulate an official requirement, which, if not attended within the delay of 60 (sixty) days of the date of respective publication, shall entail the extinction of the registration.

21– PROCEEDINGS OF DECLARATION OF FORFEITURE OF REGISTRATION

21.1– A request for a declaration of forfeiture of a trademark registration shall not be accepted if:

21.1.1– at the date of the request, at least 05 (five) years have not yet elapsed since the date of granting of the registration;

21.1.2– at the date of the request, the use of the trademark has been evidenced or the lack of use thereof has been justified by legitimate reasons, in a prior process, having been requested less than 05 (five) years earlier;

21.1.3– not accompanied by evidence of payment of the corresponding fee;

21.2– The request for declaration of forfeiture of the registration being found appropriate, the holder thereof shall be served notice, by means of publication, to evidence use of the trademark or to justify lack of use thereof due to legitimate reasons, within the delay of 60 (sixty) days, to be counted from the date of the respective publication.

21.3– At the time of examination of the evidence of use having been submitted, the INPI may formulate the official requirements necessary for the clarification thereof, including relative to the production of additional evidence, which should be answered within the delay of 60 (sixty) days of the respective publication.

21.4– Upon conclusion of the examination, there shall be published the decision, declaring the forfeiture of the registration, which may be partial, by item of Classification of Products and Services, or denying the same, if the use is evidenced for at least one product or service of each item of the class in which respect the trademark is registered.

21.5– The desistance from a request of forfeiture shall only be ratified by the INPI if requested prior to the decision at the first stage of the proceedings.

22– APPEAL OF DECISION DECLARING OR DENYING FORFEITURE OF A REGISTRATION

22.1– The decision declaring or denying forfeiture of a registration may be appealed, within the delay of 60 (sixty) days of the respective publication.

22.2– An appeal shall not be accepted:

22.2.1– if it is filed outside of the legal delay;

22.2.2– if not submitted together with evidence of payment of the corresponding fee;

22.2.3– if it is not legally founded.

22.3– If the appeal is found to be appropriate, the same shall be published and, from the date of publication, there shall automatically ensue the delay of 60 (sixty) days for the submission of arguments of reply by the interested parties. Upon expiry of that delay, the appeal shall be examined.

22.4– At the time of examination of the appeal, the INPI may formulate the necessary official requirements, including as concerns the submission of additional evidence of use, which should be attended within the delay of 60 (sixty) days of the respective publication.

22.5– Upon the conclusion of examination of the appeal, there shall be published a decision, the administrative stage of the forfeiture proceedings being thereby terminated.

 23– TRANSFORMATION OF APPLICATIONS AND REGISTRATIONS

23.1– There shall be transformed into trademarks of products, in accordance with the contents of Class 05 of the Classification of Products and Services, established by Normative Act No. 051/81, those registrations in effect and those applications for registration still pending, relative to trademarks having been included in Sub-Item 05.00 of this Classification, which was rendered ineffective in light of Article 123 of the IPL.

23.1.1– Whenever considering a medicine or a substance intended to be ingested or applied, internally or externally, to the human body or to an animal, the request for transformation of the generic trademark into a product trademark should be supported by evidence of existence of at least one other application or registration of a trademark associated with a specific therapeutic purpose, for each sub-item of Trademark Class 5.

23.1.2– The transformed trademark may only be used together with the trademark associated with the therapeutic purpose for the product in question, regardless of the same being able to be used without the other.

23.1.3– For pending applications for registration, filed during effectiveness of Law No. 5,772/71, the request for transformation may be submitted until the beginning of the examination, at the first or second administrative stages, of the application for registration, which, in the absence of such request, shall be subject to an official requirement.

23.1.4– For registrations in effect, the request for transformation should be submitted at the time of renewal of effectiveness thereof.

23.1.5– The transformation request should be submitted by means of a specific petition, together with the documents listed in Item 2, where applicable, and the evidence of payment of the fee corresponding to the new registrations.

23.2– The holders of registrations in effect and of pending applications for registration relative to product or service trademarks shall be ensured the possibility of requesting the transformation thereof into collective or certification trademarks, provided that they comply with the requirements provided in the IPL, namely those established in its Articles 123, Inserts II and III, 147 and 148.

23.2.1– In the case of pending applications for registration, filed during effectiveness of Law No. 5,772/71, the request for transformation may be submitted until the final decision concerning the application for registration.

23.2.2– In the case of registrations in effect, the request for transformation may be submitted at the time of renewal of effectiveness of the same.

23.2.3– The request for transformation should be submitted by means of a specific petition, together with evidence of payment of the corresponding fee and the documents listed in Items 2.1.6, 2.1.7 and 2.1.8, where applicable.

23.2.4– The decision of allowance or denial of the request for transformation referred in the foregoing items may be appealed, within the delay of 60 (sixty) days of the respective publication.

24– DATA INCLUDED IN THE PUBLICATIONS

24.1– The following data should be included in all publications of actions regarding proceedings and procedures relative to trademark matters:

24.1.1– number and date of the application or of the registration;

24.1.2– name of the filing applicant or the holder; and

24.1.3– initials identifying the country, international organization or, in the case of Brazil, initials identifying the Country and unit of the Federation.

24.2– The publications concerning filing of applications should additionally include:

24.2.1– the trademark;

24.2.2– the nature and form of display of the trademark;

24.2.3– the class;

24.2.4– the products or services for which the trademark is intended; and

24.2.5– priority related data, if any.

24.3– In addition to the data included in Article 24.1, the publications of opposition notification, filing of appeals by third parties, institution of administrative proceedings of nullity and request for declaration of forfeiture, there shall also be included the name of the opponent, appellant or applicant.

24.4– In addition to the data referred in Items 24.1 and 24.2 above, the publications of allowance of an application for registration, of granting and of renewal of a registration, shall include the eventual recording on the extent of the protection conferred to the trademark.

24.5– In addition to the data of Item 24.1, the publications concerning forbearance decisions shall include the object of impediment.

24.6– The publications concerning decisions rejecting applications for registration and allowance or rejection of appeals, of the administrative nullity proceedings and declaration of forfeiture, as well as the publications concerning extinction of registrations shall include the legal basis and eventual additions, further to the data of Item 24.1.

24.7– The publications concerning the recording of assignment of rights, in addition to the data included in Item 24.1, shall include the name of the assignee.

25.1– Fees having been duly paid shall not be refunded.

25.2– The petitions shall only be adequate for being docketed when the legal formalities have been complied with.