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Nullity process
of patents and trademarks |
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César
Alexandre Leão Barcellos
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First of all we emphasize that there are
differences between a null and an annul act. The null patents and trademarks
have "ex tunc" effects,
which means that it has effects in the past, present and future. However
an annul act has consequences "ex nunc",
this means that its effects are from now on. According to the Brazilian Juridical System, a
trademark can be considered null when it is granted in disagreement of the
Brazilian Industrial Property Law (Law n.º 9.279/96)
and it is important to emphasize that a nullity of a trademark can be total
or partially declared. However for a partial nullity of a trademark, the
subsistent part of the trademark must be able to be registered. Several
clauses of article 124 of the Brazilian Industrial Property Law can be used
as a fundament for a nullity process of trademark. For instance: the article
124, clause II states that it is not registered as a trademark letter, number
and date isolated, only if it is requested with a sufficient distinguished
form. In this context, the trademarks "M", "8" and
"10.09.2006" are null because they are letters, numbers and dates
isolated. However if the letter "M" is requested with the word
Apple, for example, "Apple M" to identify metallurgic products, it
can be registered because it is sufficiently distinguished. The Administrative Process of Nullity of
Trademarks and the Judicial Action of Nullity of Trademarks are the proper
way to request a nullity of trademark. |
The Administrative Process of Nullity of
Trademark can be established "ex-officio" or through an application
of any person with juridical interest, in the period of 180 days counted from
the expedition of the trademark certificate, according to the article 169 of
the Brazilian Industrial Property Law. The Judicial Action of Nullity of
Trademarks can be established by the BPTO (Brazilian Patent and Trademark
Office) or by any person with juridical interest and the limitation of action
expires in 5 years to declare the nullity of the register, starting from the
date of the concession, according to the articles 173 and 174 of the
Brazilian Industrial Property Law. We emphasize that the judicial decision
has predomination comparing to the administrative decision, according to the
Brazilian Justice. On the other hand, there is an Administrative
Process of Nullity of Patent when the patent is granted in disagreement to
the Brazilian Industrial Property Law. Such nullity could not supervene in
all claims and the condition for a partial nullity of patent is that the
other claims could be patentable by itself. Several
clauses of article 50 of the Brazilian Industrial Property Law are juridical
fundaments to declare a nullity of patent. For instance, the clause III of
article 50 states that a nullity of patent will be declared administratively
when the object of the patent is extended more than what was protected in the
original application, this means that a patent of invention (product or
totally new process) is filled and then it is used with other claims that are
already in public domain, in a way that the application of a patent of
invention becomes an utility model, in order to declare a partial nullity of
the patent application. |
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The
Administrative Process of Nullity of Patent can be established
"ex-officio" or through an application of any person with juridical
interest, in the 6 month period starting from the concession of the patent,
according to article 51 of the Brazilian Industrial Property Law. At the same
time the Judicial Action of Nullity of Patent can be established any time
when the patent is in force, by the BPTO (Brazilian Patent and Trademark
Office) or by any person with juridical interest, according to article 56 of
the Brazilian Industrial Property Law. Once more we emphasize that the
juridical decision has predomination comparing to the administrative
decision, according to the Brazilian legislation. |
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