Brazil – New Regulations Concerning Forfeiture Actions

The Brazilian Patent and Trademark Office has published new regulations which modify the evidentiary and procedural aspects of forfeiture actions against patents and trademark registrations on the grounds of non-working and non-use, respectively.

The provisions common to both patent and trademark forfeiture actions include the following:

1) Forfeiture actions may be instituted either ex officio or by an interested party and notice will be given by publication in the Official Gazette.

2) Evidence of working or use must be submitted by the owner of the patent or the trademark registration within 60 days of the notification; documentation which is illegible or which contains erasures will not be accepted.

3) Forfeiture actions may be withdrawn at any time prior to a decision in the first instance.

In addition to the above, the regulations contain the following provisions relating specifically to patents and trademarks:

Patents

1) Forfeiture petitions will only be considered if two years have elapsed since the grant of a compulsory license.

2) It is a defense to a forfeiture action that the patent has been worked in Brazil by the patentee or a licensee whose license has been registered with the Patent Office.

Trademarks

1) Actions may not be filed until 2 years after the date of the registration.

2) The registrant or licensed user of the mark may defend the action by proving that the mark was used

a) within the 2-year period following the date of registration; or

b) within the 2-year period prior to the date the forfeiture action was commenced; or by showing that there were justified reasons for not using the mark within the required periods.

3) In accordance with a previous regulation, the Brazilian Patent and Trademark Office expressly stated that evidence of use by a licensee may be admissible even though the license has not been recorded against the trademark registration.