Updates About Non-use Cancellation Action Procedures Provided By The BPTO Technical Note No. 03.2022

• Law Firm: Le'o Advogados Associados
• Subject Matter: Intellectual Property, Trademark
• Author: Le'o Advogados Associados
• Published date: 08 May 2023

On December 28, 2022, the BPTO has published the Technical Note No. 03 of 2022, which updates the procedure for the non-use cancellation action.

Non-use is the possibility to claim for the declaration of extinction of a trademark in case its use has not started after 5 (five) years from the date of its concession or in case of using the mark in a different way as it was granted (or i.e. with any substantial alteration from what was originally registered and/or commercializing products or services of which they were not registered for). In addition, expiry may be declared if the use of the trademark has been interrupted for more than 5 (five) consecutive years.

Therefore, we highlight below the main updates in this procedure:

1. The registration holder is not obligated to provide proof of use for the first 5 (five) years from the concession date;
2. Use in the private sphere, or just the internal use of the trademark, will not be considered capable of ruling out the non-use cancellation, given that preparation for use (development of labels, packaging, creation of visual identity) characterizes internal use;
3. It is considered public use of the trademark the one made in intermediary transactions that take the product or service to consumers (distribution);
4. The trademark does not need to reach the final consumer;
5. There is no determination for a minimum amount of use of the trademark, however the number of supporting documents must be consistent with the characteristics of the product or service in the respective market;
6. In the case of a trademark in co-ownership, the proof of use of the trademark presented by at least one of the co-owners rules out the cancellation for...