Written by Rafael Garutti
According to Brazilian IP Law, it is possible to file an Administrative Cancellation in order to try to cancel a trademark registration. Such procedure may be initiated ex officio or upon the request of any person with a legitimate interest within 180 days counted from the date of grant and before the Brazilian Patent and Trademark Office (INPI); the cancellation may be total or partial. The registrant may respond the cancellation within 60 days from its publication. The response is not mandatory; however, it is strongly recommended to file it confronting third party’s argument.
Even if no response is filed, the procedure shall be analyzed by the President of Brazilian PTO. The cancellation proceedings will be continued even if the registration is extinct, since declaration of nullity will be effective as from the filing date of the application.
Likewise, any person with a legitimate interest or the Brazilian PTO may file a Cancellation Action against a trademark registration up to 5 years counted from the date of grant before the Brazilian Federal Courts. It is possible to file the Cancellation Action directly (without to file an Administrative Cancellation), however it is suggested to file the administrative one at first, since it is cheaper and less bureaucratic.
According to some Brazilian Courts decisions, before to file a Cancellation Action, the interested party should file an Opposition (within 60 days from the publication of the application in the Brazilian PTO Official Gazette – RPI). The lack of Opposition may be used as a substantial argument of defense in the response to the Administrative Cancellation or to the Cancellation Action.
After 5 years from the date of grant, it is possible to file a Non-Use Cancellation. If third party does not prove the use of their mark in the country or explain a rightful reason for the non-use, the registration shall be extinguished.
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