The Brazilian Patent and Trademark Office (INPI) does not have to be the final stop. Going to court has become more than ever a viable option to challenge the INPI’s decisions.
Brazil has notoriously had a problem with delayed decisions from the INPI. At its worst, the so called “backlog” of work let trademark applications pending examination for four years, plus another eight years if an appeal was filed.
With an eye on joining the Madrid Protocol (which is in effect in Brazil as of October 2nd, 2019), the INPI reorganized itself, hired more examiners and was able to become more efficient – at least in terms of reducing the timeframes for its decisions.
However, an issue that is yet to be fully addressed is the quality of the decisions, which can be short, and many times inconsistent. In Brazil, decisions issued by a public office can be subject to review by a Federal Court.
The Federal Court of Rio de Janeiro has had judges specialized in IP since 2001. Over the years, they have ruled over thousands of cases involving the INPI. The judges are not only experienced, but free to review the BPTO’s decision in full, based on the claims of the plaintiff.
The numbers independently gathered by Daniel Law show that roughly 500 cases challenging decisions from the trademark office are filed yearly. More impressively, the overall average of the last four years of decisions disclose that the IP specialized judges have overruled the INPI’s decisions in just under 50% of the cases. There are of course many different circumstances involving the outcome of these lawsuits. A frivolous claim can always be quickly dismissed by these experienced judges. While the INPI is the authority when it comes to granting or refusing industrial property rights such as trademarks, it does not necessarily have the final say.
Article published in the Managing Intellectual Property, read here.