On May 18, 2018, was published in the Federal Official Gazette a reform to the Industrial Property Law (“IPL”), which will become effective on August 10, 2018. Since some of the amendments are business relevant, we prepared the following note:
Statement of Use. Titleholders of trademarks are obliged to file a statement of use, within the three months following the third year in which the registration was granted. If the titleholder does not file the statement, the registration shall elapse.
Scope of the trademark protection. New elements can be protected with a trademark registration, including, among others:
- Smell and sound marks. Distinctive smells and sounds can be protected with a trademark registration.
- Holographic signs. Such signs can now be protected with a trademark registration.
- Certification marks. These marks distinguish products and services, whose qualities or characteristics had been certified by the titleholder of the mark, e.g. components, manufacturing conditions, quality, etc.
- Trade dress protection. The plurality of operative and image elements, e.g. the size, color, label, packaging, decoration and any other that when combined differentiates products and services in the market, can be protected as a trademark.
Obstacles trademark registration. The obstacles for trademark registration are amended and supplemented. It its worth highlighting the incorporation of the bad faith filing as an obstacle for the registration. In this case, the registration is requested against the good practices, traditions and customs or if it aims to obtain an undue benefit or advantage affecting its rightful owner.
Likewise, it is worth mentioning the acknowledgment that certain registration obstacles can be prevented by filing the written consent of the interested party, e.g. for the registration of similar trademarks to a confusing degree with respect to a prior registration which protects the same products or services.
Opposition System. The parties will be allowed to file evidence and subsequently their final pleadings, without interrupting the term of the registration proceeding.
Statute of limitation of annulment actions. The statute of limitation to apply for the annulment of a trademark due to prior use is extended (from 3 to 5 years).
As per the amendments of the LPI, it is necessary to update is Regulations in order to set forth practical aspects of the new provisions. For more information, do not hesitate to contact me through Legalmondo.