Brazil: INPI’s decisions can be challenged at Brazilian courts
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Brazil: INPI’s decisions can be challenged at Brazilian courts

The Brazilian Patent and Trademark Office (INPI) does not have to be the final stop. Going to court has become, more than ever, a viable option to challenge the INPI's decisions.

Brazil has notoriously had a problem with delayed decisions from the INPI. At its worst, the so called "backlog" of work left trademark applications pending examination for four years, plus another eight years if an appeal was filed.

With a view to joining the Madrid Protocol (which came into effect in Brazil on October 2,2019), the INPI reorganised itself, hired more examiners and was able to become more efficient – at least in terms of reducing the timeframes for its decisions.

However, an issue that is yet to be fully addressed is the quality of the decisions. Decisions can be short, and many times inconsistent. In Brazil, decisions issued by a public office can be subject to review by a Federal Court.

The Federal Court of Rio de Janeiro has had judges specialised in IP since 2001. Over the years, they have ruled on thousands of cases involving the INPI. The judges are not only experienced, but free to review the decision in full, based on the claims of the plaintiff.

The numbers independently gathered by Daniel Law show that roughly 500 cases challenging decisions from the trademark office are filed yearly. More impressively, the overall average of the last four years of decisions disclose that the IP specialised judges have overruled the INPI's decisions in just under 50% of the cases.

There are of course many different circumstances relating to the outcome of these lawsuits. A frivolous claim can always be quickly dismissed by these experienced judges. While the INPI is the authority when it comes to granting or refusing industrial property rights such as trademarks, it does not necessarily have the final say.


Robert Daniel-Shores

Daniel LawAv. República do Chile, 230, 3rd FloorCentro, Rio de Janeiro 20031-170, BrazilTel: +55 21 2102

more from across site and ros bottom lb

More from across our site

The deal could help Rouse gain a foothold in Australia and New Zealand for the first time
With a team of more than 80 patent lawyers and attorneys across 21 European offices, the firm is acting in some of the most high-profile UPC cases
Lippes Mathias has hired three partners and a counsel from Offit Kurman
External counsel for automotive companies explain how trends such as AI and vehicle connectivity are affecting their practices and reveal what their clients are prioritising
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
The winners of the awards will be revealed at a gala dinner in New York City on April 25
Counsel debate the potential outcome of SCOTUS’s latest copyright case after justices questioned whether they should dismiss it
Each week Managing IP speaks to a different IP lawyer about their life and career
The small Düsseldorf firm is making a big impact in the UPC. Founding partner Christof Augenstein explains why
The court criticised Oppo’s attempts to delay proceedings and imposed a penalty, adding that the Chinese company may need to pay more if the trial isn’t concluded this year
Gift this article