The INPI public consultation opens the door to the registration of position marks
The Brazilian Institute of Industrial Property (INPI) has implemented significant institutional and operational changes over the past two years to improve its position among the leading intellectual property institutes in the world.
For example, it has launched a patent backlog plan, which aims to reduce the number of pending patent applications by 80% by December 2021, as well as shorten the examination and issuance of patents between three and four years.
Regarding trademarks, in October 2019, the period for examining and granting trademark registrations was reduced to six to 12 months to allow for the implementation of the Madrid Protocol. In addition, since December 2021, the INPI has made available the full content of decisions relating to trademark prosecutions. The following decisions published in its Official Gazette to December 15, 2020 are now available:
- granting of candidacies;
- office actions;
- rejection decisions; and
- suspension of the examination due to prior rights pending the final registration decision.
More recently, the INPI launched a public consultation on the registration of position marks. A position mark is a mark that consists of the specific way in which the mark is placed or affixed to goods. For example, such marks are often used in the fashion industry to protect decorative elements of shoes, eyeglass frames and clothing. Although they are part of the group of non-traditional marks – which includes color, smell, sound, taste, feel and moving images, among others – position marks are still not registrable as such in Brazil. The common forms of registration currently available in the country are word, figurative, semi-figurative and 3D marks. However, the public consultation indicates that this scenario is changing in Brazil.
Indeed, the consultation aims to submit to the comments of interested parties:
- draft normative act that would provide for the registration of position marks, in light of Article 122 of Law 9279 of the Brazilian Intellectual Property Law (1996); and
- draft guidelines for the review of applications for registration of position notes.
The public consultation was published in the INPI journal Official Gazette on April 13, 2021. The deadline for receiving suggestions has been extended by an additional 30 days, as published on May 11, 2021. Interested parties now have until June 12, 2021 to submit their suggestions and comments.
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