Until the reform introduced by Law 27,444, where a party raised an opposition against a trademark and no agreement could be reached to obtain the withdrawal of the opposition, such oppositions had to be solved judicially.
One of the most important changes introduced by Law 27,444, which was enacted in May 2018, is that trademark oppositions are no longer initially settled in federal courts, but are instead settled administratively by the National Institute of Industrial Property (INPI). Further, under the new system, parties may file direct appeals with the Federal Court of Appeals in Civil and Commercial Matters.
The settlement of oppositions through administrative channels aims to accelerate proceedings and reduce costs.
In the former system, if an applicant did not initiate negotiation or if the negotiation failed and the applicant did not bring an action in court within the legal term, the opposition became successful. In such cases, the INPI would deem the trademark application to be abandoned after the expiry of the legal term.
The reform introduced by Law 27,444 produced a significant change in the process of filing and conducting an opposition: it is now the opposing party which must impel the opposition and bear its costs.
Since the law became effective and with the new system in operation, the INPI has issued a series of resolutions in administrative opposition processes.
In such decisions, the INPI has followed and considered the relevant rulings and the vast case law of the Federal Court of Appeals in Civil and Commercial Matters in relation to this subject.
