The co-ownership of trademarks is now an option to applicants, for both new local applications and designations of Brazil via the Madrid System for filing international registrations.
A trademark application or registration originally owned by one individual or entity may be subject to assignments resulting in co-ownership.
Brand owners should be aware of the following implications:
- The declaration of activities must concern all co-owners (all registrants must declare that they are engaged in the field of activities related to the products/services claimed);
- There is no limit to the number of co-owners;
- Each of the co-owners must meet certain criteria to qualify for discounts of official fees charged by the BPTO;
- The BPTO may cite a prior mark even if one of the applicants of the subsequent trademark application is the same;
- Regarding non-use cancellation actions, the evidence of use may be presented by at least one of the co-owners unless the argument for legitimate reasons for trademark non-use is raised, in which case the non-use must be justified by all the owners;
- Assignments will require authorization from all co-owners;
- All acts must be performed jointly by all co-owners, applicants, or their respective legal representative in Brazil. However, any oppositions, nullity actions, and non-use cancellation actions initiated by one of the co-owners will benefit all; and
- Co-ownership is not available for collective trademark registrations.
The introduction of co-ownership of trademarks in Brazil reflects another step towards harmonization of the procedures for trademark registrations with the requirements under the Madrid Protocol.
Article published on INTA. Read it here.