As part of its internal adaptation process to the Madrid System, the Brazilian PTO published, in the latest Official Gazette, two important resolutions: (i) Resolution No. 244/2019, regarding the division of trademark applications and registrations into two or more processes, and (ii) Resolution No. 245/2019, which refers to the joint ownership of trademarks.

Allowing the division of trademark applications and registrations is a necessary step for the adoption of the multiclass system, which will also be available in Brazil after the Madrid System comes into force. According to Resolution No. 244/19, the applicant or the owner of a trademark registration may choose, when requesting the division of its trademark application or registration, which items listed in the description of goods/services shall be transferred to the new application(s) or registration(s) resulting from the division process. These new applications/registrations will maintain the priority date of the original trademark process. Resolution No. 244/19 also brings important provisions regarding the division process in the contexts of abeyance decisions and of recordal of assignment requests. The resolution will come into force on March 09, 2020.

Resolution No. 245/2019, by its turn, establishes the possibility of a group of applicants jointly filing a single trademark application in Brazil, provided that certain legal requirements are met. Similarly, new owners may be added to an already existing trademark registration. The mentioned resolution further clarifies which acts and rights must be necessarily exercised by all the trademark applicants or owners, and which acts practiced by just one member of those groups will suffice. The joint ownership system will be available on the Brazilian PTO’s system “Sistema e-INPI” starting on March 09, 2020.

 

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