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Disclaimers in Trademark Examination

For years, the Brazilian Patent and Trademark Office - BPTO - has been experiencing a considerable backlog on the examination of patents, industrial designs and trademarks. To better illustrate this scenario, we point out that the current backlog of trademarks at the BPTO reflects nowadays, approximately 650.000 cases.

Hence, the backlog has been the number one subject on the agenda of the BPTO's president Luiz Otávio Pimentel.

In order to optimize this situation, the Trademark Office has been adopting measures to expedite the analysis of trademark applications and considerably reduce the backlog on the following years. One of these measures was the implementation of Resolution No. 161 on February 18, 2016.

Resolution No. 161/2016 establishes that all trademark Certificates of Registrations will disclose a generic disclaimer, which read as follows: "The protection granted by the present trademark registration, considering the stated on Article 124, items II, VI, VIII, XVIII and XXI of the Brazilian Industrial Property Law No. 9,279, of May 14, 1996, will not prevent others from using in its real meaning, or employing in the composition of other marks that are distinguished from this on a whole, the following elements, that may be comprised in the trademark: a) letter, digit or date; b) signs of a generic, necessary, common, usual or simply descriptive character, when related to the product or service to be distinguished; c) sign commonly used to designate a characteristic of the product or service specified in the registration with respect to its nature, nationality, weight, value, quality and moment of production or of giving a service; d) colors and their names; e) technical term used in industry, science and art that is related to the product or service to be distinguished; and f) the necessary, common or usual shapes of a product or of its packaging, or, furthermore, shapes that cannot be disassociated from a technical effect".

The text is to be included not only on the registration certificates, but also on the renewal certificates, despite the fact if mark was granted with or without a disclaimer in the past.

In addition, the Resolution also states that prior administrative appeals and nullities based on disclaimer that are still pending examination, will be accepted and examined based on the new Resolution.

Notwithstanding, it is worth to clarify that the effects of Resolution No. 161/2016 are retroactive, meaning that all disclaimers issued in the past will be disregarded.

The elaboration of this resolution seeks to reduce the time that an Examiner spends on analyzing each mark, since it will no longer be necessary to be verified by the Examiner if a disclaimer should be applied and, as a replacement, all granted registrations would comprise a generic disclaimer.

Moreover, it also intends to reduce the number of administrative appeals and nullities based on disclaimers.

This significant modification was not very well received by the local Intellectual Property Associations, who officially requested the temporarily suspension of such Resolution No. 161/2016. Such request was accepted by the BPTO and the implementation of Resolution No. 161/2016 was postponed to May 2nd ,2016

During this period, there has been several discussions over the subject by the local IP associations, all part of the elaboration of a report that will be presented to the BPTO's president soon, urging the suspension of Resolution No. 161/2016.

One of the main concerns highlighted by the local associations is that the work that no longer will be performed by the Trademark Office will be forwarded to the Judiciary, since this would be the steps to be taken in case the title holder faces an issue with third parties about a potential limitation on a trademark registration.

In other words, all appeals and nullity actions that today are discussed in the administrative sphere will not cease to exist, instead they will be discussed on the judicial level, which costs are much higher.

The local associations are questioning as well that since the Certificate of registration is a proprietary title, it must limits the rights granted to the trademark owner and the inclusion of the generic disclaimer will be going against such principle.

As a solution, said associations are proposing to adopt in Brazil the "Volunteer disclaimer" which is already in force before the USPTO and EUIPO.

In this case, the applicant would claim said disclaimer once filing the application; of course, this action, would not oblige the Examiner to accept it once analyzing the case.

The BPTO, so far, maintains its understanding by alleging that, taking into consideration that article 124 of the Brazilian Industrial Property Law already determinates the elements that are not acceptable for registration, there is not downside on replacing the current disclaimer for one with a generic text. Moreover, it argues that this modification will assure a uniform wording.

The truth is that considering the huge delay that the BPTO has been experiencing, some industrial property agents and attorneys agree with Resolution No. 161/2016, once, even though it will provide a more generic disclaimer, it would, on the other hand, expedite the analysis of the mark. Others understand that the lack of resources of the BPTO in reducing its backlog should not affect the quality of the examination of the marks.

Anyway, shortly we believe the BPTO will have an official position regarding this "disclaimer" issue on the examination of Trademark applications, balancing the advantages and disadvantages of adopting any of the above alternatives.