Amendments to the Industrial Property Law, were published in the Federal Official Gazette on May 18, 2018 and will enter into force on August 10, 2018. The changes are as follows:
- Non-Traditional trademarks: Sound, olfactory and holographic trademarks can be registered.
- Trade Dress: The amendment introduces the possibility of registering the plurality of operative elements and image elements for distinguishing products or services in the market, such as trade dress.
- Secondary Meaning: Trademarks that have acquired distinctiveness derived from their use may be registered, such as marks that would otherwise refused on the basis of being descriptive.
- Bad faith: Introduces bad faith as an impediment for the registration of a trademark. Bad faith is defined as: when the registration is requested against the good practices, uses or customs of the Industrial Property System, commerce and industry, or when an improper benefit or advantage is sought.
Bad faith is introduced as a ground for the nullity of a trademark registration. Such action may be exercised at any time.
- Declaration of Use: It is introduced the obligation to file a Declaration of Use, within 3 months after the three years of registration. This is an on-time declaration. If such declaration is not filed the trademark will lapse.
- Opposition System: The examiner will be compelled to take into account an opposition. Evidence may be submitted and subsequently arguments may be filed, within a period of 2 working days. However, the opposition procedure will not suspend the application procedure, nor determine the outcome of the substantive examination.
- Coexistence Agreements: Introduces the possibility of submitting coexistence agreements or letters of consent in order to allow the registration of a trademark.
- Certification Trademarks: Certification trademarks are incorporated to distinguish products and services whose qualities or characteristics (components, processing conditions, quality, processes, geographical origin) have been certified by their owner.
- Well-known and Famous Trademarks: The declaration of notoriety or fame of a trademark may be requested without it being previously registered.
- Nullity of trademark based on prior-use: The deadline for filing a trademark nullity action based on prior-use is extended from 3 to 5 years.
Note: Applications and oppositions submitted prior to the entry into force of the amendments will be resolved in accordance with the provisions in force at the time of submission.
The details of the previous reforms will be addressed in the Regulations that will be published later.