In Brazil, the courts, rather than the Brazilian Patent and
Trademark Office (BPTO), have the final say about the
registration or cancellation of a patent, design or trade
In a different way from many common law countries, Brazilian
courts are fully competent to review and overrule the
registrar's decisions in their entirety. This authority of the
courts means that IP holders do not have to settle for an
unfavourable decision at the BPTO, whether involving their IP,
or third-party cases, and can file judicial appeals seeking a
The possibility of reviewing a trade mark or patent case in
court has become very important in the context of the BPTO
being pressured to speed up examination timelines without the
need to maintain appropriate quality levels. Inevitably, there
is a trade-off between speed and quality.
The purpose of this article, however, is to provide insight
into Brazil's court system and the legal mechanisms available
to challenge the BPTO´s decisions effectively. We will
therefore give some context to the changes happening within the
BPTO, in particular around trade marks, and how this affects
the new litigation strategies.
Over the last two years, the BPTO has brought down the
examination time of trade mark applications to almost 18 months
(looking at joining the Madrid Protocol in 2019). Appeals that
were waiting eight years for a decision, now take less than 12
months to be decided. The overnight change to the BPTO's pace
has resulted in contradictory decisions, a problem that was
highlighted by the controversial interpretation given by the
BPTO to some aspects of Brazilian IP Law.
However, in a different manner to some other common law
countries (such as the US and UK), decisions from the registrar
are widely challengeable by judicial appeals to the Brazilian
courts, which review all aspects of the case, including the
technical grounds and arguments argued by the examiners.
Appealing to the courts has become so prevalent in Brazil
that the Federal Court of Rio de Janeiro (where the BPTO is
headquartered) has a group of judges specifically assigned to
decide IP cases, both at trial and appellate level. These
specialised IP courts handle an average of 500 new appeals
involving BPTO decisions, every year.
Until very recently, the BPTO was a mandatory party to these
proceedings, and as such had to bear the costs of being the
losing side. In other words, every time a court reversed a BPTO
decision, the registrar was forced to pay legal fees. And the
bill started to rack up.
There are 500 new lawsuits against the BPTO every year.
Statistics independently collected by our firm over the last
four years indicate that 49% of the time Brazilian courts side
with applicants to overrule the BPTO's decisions. This scenario
created an uncomfortable situation for the BPTO, which had its
public attorneys actively defend almost all of its challenged
decisions, even when wrong, to avoid payment of legal fees.
Aware of the increasing number of lawsuits against the BPTO,
the Federal Court of Rio de Janeiro recently issued a
resolution changing the registrar's role in judicial appeals
and making the rule around payment of legal fees more
Firstly, IP judges held that in nullity actions –
to cancel the grant of a patent, design or trade mark
registration – the BPTO would only be required to
present a defence once the owner of the challenged IP responded
to the plaintiff´s claims. If the BPTO agrees with the
cancellation claim – therefore reviewing its decision
at the administrative level – the registrar will be
considered an assistant to the lawsuit, not a co-defendant, and
consequently relieved from paying legal fees.
When a judicial appeal involves a claim to overrule the
rejection of a patent, design or trade mark application, the
BPTO will not be allowed to be an assistant, remaining as a
mandatory defendant. However, if the registrar decides to agree
with the plaintiff's claims – therefore reviewing its
prior decision to now allow the subject IP to be registered
– the courts will relieve the BPTO of the payment of
The change to the BPTO's role may seem a small one at first,
however, recent cases decided under this new resolution show
the BPTO is more amenable to accept a plaintiff´s claims.
The BPTO's attitude when confronting these judicial appeals has
changed significantly. The BPTO's approach has become more
neutral, and its response is no longer driven by fear of paying
legal fees, but rather by the need to provide a more critical
and technical review of the administrative decision to grant or
reject an IP application.
In practice, the BPTO agrees more and more with claims
brought to court. And this not only considerably increases the
chances of success in the judicial appeal itself, but also
gives room for a quicker turnaround for litigation.
With these recent changes, judicially appealing a decision
from the BPTO has been consolidated as a natural continuation
of the administrative prosecution of a patent or trade mark.
The prospects of success in these judicial appeals are good,
and because they do not involve the same complex legal
procedures involved in conventional litigation, they are a
financially efficient way to give that final push to secure
certain IP rights in Brazil.
While the BPTO is on the path to improving its examination
capabilities, applicants should be aware that challenging a
BPTO decision is not frowned upon in Brazil, and that Brazilian
courts are friendly to the idea of reviewing administrative
Daniel Legal & IP Strategy
Av. República do Chile
230, 3rd Floor
Centro, Rio de Janeiro
Tel: +55 21 2102 4212