Newsletter 2016.03 BPTO eliminates the “disclaimer” in Trademark Registration

On February 18, 2016 the Brazilian Patent & Trademark Office -BPTO enacted Resolution No. 161, regarding the disclaimer adopted in trademark registrations, in an attempt to standardize and bring transparency to the decisions rendered in the trademark application procedures.

 

The disclaimer of a mark is nothing more than a way to define the scope of protection granted by the registration. As an example of disclaimer, we could mention the hypothetical registration for trademark “EYE CLINIC SEROPÉDICA”, to identify medical services. In this case, the BPTO granted the registration with the disclaimer “without the exclusive right of use for the expression 'eye clinic'”. For more than 30 years, the BPTO has debated with IP specialists the possibility of no longer making this kind of disclaimer on the registrations, but there was always the fear that the absence of the disclaimer would cause more harm than benefit.

 

Trademark infringement actions can be proposed in any state civil court, in all Brazilian territory, but the unfamiliarity of the judges with IP Law could make the Courts unduly grant preliminary injunctions to cease the use of signs or expressions of common use, as it has already happened in the past, in cases in which the correct disclaimer was not made. The new Resolution tries to find a creative solution to this problem, but it seems to us that this might not be the right pathto follow.