Precedence Right

Recently, the Federal Attorney General’s Office issued Opinion No. 43/21, providing new guidelines on the application of the Right of Precedence in the trademark sector.

The opinion was issued with the objective of reviewing the understanding of the BPTO, consolidated for over a decade. It deals the possibility of admitting an allegation based on the Right of Precedence in the Administrative Nullity Proceeding (PAN, the initials in portuguese).

Although Brazilian legislation has adopted the legally attributive system, provided for by article 129 of the Law no 9.279/96 (Brazilian Industrial Property Law), which provides that the right of exclusive use of a certain brand is acquired through the valid registration granted by the BPTO, and is also provided for same law an exception: The Right of Precedence.

Article 129, paragraph 1st, of the aforementioned law, deals the possibility of a person obtains the registration of a mark even if another person applied for registration with the BPTO on an earlier date, confirmed that the person has made use, in good faith, of the mark at least 6 months prior to the deposit for registration application. That right can only be exercised if the use has been for an identical or similar mark and to differentiate or certify an identical, similar product or service.

The BPTO’s interpretation of the aforementioned device, for many years, has been toward that the Right of Precedence could only be used as valid argument in opposition state, that is, within a period of 60 days counted from the publication of the registration request. This understanding of the BPTO has been questioned in court over all these years. Decisions have been adopted, on the one hand, recognizing the possibility of exercising the Right of Precedence at any time prior to the registration concession (Regional Courts) and, on the other hand, in the sense of extending the validity of this argument throughout all the administrative process, that is, even in the Administrative Nullity Proceeding.

Finally, was issued by the Federal Attorney General’s Office the opinion No. 43/21, which changed the understanding of the BPTO, recognizing the possibility of using the Right of Precedence even after the registration concession. The aforementioned Opinion is based on the inexistence of a legal provision that argue a time limit to use the allegation, just as that does not exist a prohibiting to the use of that argument in the Administrative Nullity Proceeding. The aforementioned opinion, which has a normative effect, will have a great impact on Brazilian Trademark Processes and represents a major advance in Brazilian Trademark Law.

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