The Forfeiture/Non Use Trademark Process in Brazil

César Alexandre Leão Barcellos

Advogado e agente da propriedade industrial integrante do Escritório Leão Propriedade Intelectual

Their has been some news concerning the Forfeiture Trademark Process in Brazil (Industrial Property Law n.ş 9.279/96, from May 14th 1996). The previous Law n.ş 5.772 from December 21st 1971, stated that in Brazil, the registration or the request of a trademark would forfeit ex office when a trademark has not started being used in 2 years following the concession of the register, or if the use was interrupted for more than 2 consecutive years. In the new Brazilian Industrial Property Law (Law n.ş 9.279), it is stated that the register of the trademark will forfeit when someone with legitimate interested requires it and if after 5 years of the granting of the trademark, it has still not been used in Brazil, or if the use of the trademark had been interrupted for 5 consecutive years. In other words, the period of forfeiture increased from 2 to 5 years. On the other hand, the old Law n.ş 5.772/1 did not require legitimate interest to apply the forfeiture of a trademark, while in the Law n.ş 9.279 it is expressly required in the Law the necessity of having legitimate interest to apply for the trademark forfeiture.

The legitimate interest is established when a trademark application conflicting with the forfeiting trademark registrar in identifying products or services identical or similar. Most countries do not recognize that the trademark has not been used, and in this situation can forfeit. The old Brazilian Industrial Property Law stated as an exception of the forfeiture the existence of an act of god clause. However the new Brazilian law states that it will not forfeit if the titular justifies with legitimate reasons why the trademark has not been used, so that through an extensive interpretation, legitimate reasons are an act of god and casualty. The Law n.ş 5.772/1971 considered the forfeiture process for trademarks and expressions or signs of advertisement, otherwise the Law n.ş 9.279/1996 considers for forfeiture only trademarks, since the new Law does not expect expressions or signs of advertisement anymore.