Co-ownership: a new tool in the management of Brazilian trademarks
The ability to register a trademark in co-ownership was a long-standing complaint by users of the IP system in Brazil, which in many cases were led to constitute a new corporate entity for the sole purpose of sharing ownership over a trademark. Although the law does not prohibit co-ownership of industrial property assets, the Brazilian PTO (INPI) did not provide the mechanisms needed to allow the registration of a trademark in the name of more than one owner.
Nevertheless, in view of Brazil’s recent adherence to the Madrid Protocol1, the INPI was requested to review this matter in order to comply with the Protocol, which permits co-ownership of trademarks.
Therefore, INPI issued Resolution 245/2019, expressly providing for co-ownership of marks. Although the resolution came into effect in 2019, the INPI’s system was only able to process co-ownership applications and co-ownership registrations on September 15, 2020. Since that date, it is possible to file trademark applications in the name of more than one applicant, as long as all the co-owners effectively and licitly engage in activities related to the products and services covered by the application.
Co-ownership is not restricted to new applications, and co-owners can be added to existing registrations and applications by submitting a request for transfer of ownership. Transfers to include co-owners should cover all identical or similar marks, because the marks not included would be cancelled by the INPI.
Once registered, co-owners must act jointly before the INPI with respect to the co-owned mark, with the exception of certain acts which may be performed separately by the co-owners (filing oppositions, administrative nullity requests or non-use cancellation requests, for example).
Co-ownership is, without a doubt, an important mechanism for trademark owners, since it recognizes a legal scenario that already exist and cannot be disregarded by the INPI.
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1International treaty that facilitates the registration of marks in various countries around the world.
