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Patricia Lusoli

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Trademarks

New Trademark Manual Issued 

March 30, 2015
Originally published in World Trademark Review Daily

On November 27 2014 the Brazilian Patent and Trademark Office (PTO) published Resolution No 142, which
instituted a new Trademark Manual.

The Trademark Manual unifies four documents that have been used by trademark examiners in their daily activities:
  • the Trademark Guidelines;
  • the Trademark Examination Proceedings Manual (an internal document of the Brazilian PTO);
  • the E-Marcas System User Manual; and
  • the User Manual for the Presentation of Paper Applications and Petitions. 
In addition to these documents, the Trademark Manual incorporates normative opinions, resolutions, normative instructions and tacit practices that have been applied to trademark examination proceedings.

In general terms, the Trademark Manual provides detailed information regarding the filing of petitions and trademark analysis. The new manual divides the trademark examination updates into two parts - namely:
  • new procedures; and
  • consolidation and improvement of existing procedures. 
Among the new procedures, the manual deals with the following cases: 
  • composite trademarks the word element of which is a non-registrable term or expression; 
  • conflicts with a third-party registered trademark bearing a disclaimer;
  • conflicts in which the opponent and the applicant have incorporated the sign under dispute in their commercial names; and
  • withdrawal of the non-registrable part of a trademark upon the applicant’s request. 
With regard to the consolidation and improvement of existing procedures, the PTO clarified which
disclaimers are currently in use and which are no longer in use. Other aspects concern: 
  • the analysis of the distinctiveness of signs incorporating generic, necessary, common or descriptive terms; 
  • the analysis of trademarks containing diluted terms; and
  • additional guidelines relating to the stylisation of official monuments and symbols. 
On the one hand, the Brazilian PTO established more flexible rules in relation to specific topics (eg, the
stylisation of official monuments and symbols), but on the other, it set forth more restrictive rules in other
respects.

Before issuing the final version of the Trademark Manual, PTO officials met with representatives of the Brazilian Intellectual Property Association, the Brazilian Industrial Property Agents Association and the Intellectual Property Association of the State of São Paulo, and several important topics were discussed. This demonstrates the interest of the Brazilian PTO in hearing what organisations have to say.

The Trademark Manual is undoubtedly an important tool, not only for those who use the services provided by the PTO, but also for trademark examiners in their daily activities.

Patrícia Lusoli, Guerra Propriedade Industrial, Rio de Janeiro

World Trademark Review (www.worldtrademarkreview.com) is a subscription-based, practitioner-led, bi-monthly publication and daily email service which focuses on the issues that matter to trademark professionals the world over. Each issue of the magazine provides in-depth coverage of emerging national and regional trends, analysis of important markets and interviews with high-profile trademark personalities, as well as columns on trademark management, online issues and counterfeiting.