BPTO recognizes the Right of Precedence as an argument for filing Administrative Nullities

By Flávia Tremura and Isabella Faccioli

From November 2021 the BPTO will start to accept the right of precedence of the trademark as an argument to support administrative nullity proceedings.

The Article 129 of the Brazilian Industrial Property Law establishes the right of precedence, according to which any person who, in good faith, on the date of priority or filing, has been using an identical or similar trademark in the country for at least 6 months, to identify identical, similar or akin products or services, will have the right of precedence for registration of the mark over the other applicants. In other words, the owner of the right of precedence has guaranteed a right to “jump the queue” in the line of analysis of trademark applications, overtaking the place of the other applicant.

The Law, however, is silent on the method and the moment to allege the right of precedence. Since 2009, the BPTO’s understanding has been that the right of precedence could only be alleged in an opposition proceeding, together with the evidence of use of the mark, in the Country, for at least 6 months and the filing of an application for the mark. Therefore, after the third party trademark was registered by the BPTO, the prior use in good faith as not accepted as grounds for an administrative nullity proceeding.

In contrast to the BPTO’s understanding, the Courts have been accepting the claim of right of claim of right of precedence at any time, including after the trademark registration was granted.
precedence at any moment of the proceeding, even after the issuance of the trademark registration.

In view of the contradictory understanding between the BPTO and the Courts, and given the repeated Court’s decisions that reformed the BPTO’s prior understanding, the BPTO requested the Attorney General’s Office for an opinion on the matter. The conclusion was for the possibility of claiming the right of precedence even after the issuance of the trademark registration, through an administrative nullity action , that could be filed 180 days as from the issuance of the registration.

The BPTO has recently announced that this understanding will be incorporated in the future decisions regarding the right of precedence.

This is an important change, as it makes the possibility of recognizing the right of precedence faster and in a cost-effective way, offering to the previous user in good faith another option to discuss its right in an administrative venue, before having to resort to the courts.

If you are interested in more information on the matter, our Trademark team is at your disposal. Please contact the professional who usually assists you, or write to mail@kasznarleonardos.com.