1E9Ct5D

With respect to trademarks, the Law permits the forfeiture of the respective registration, at the requestof third parties with legitimate interests, if its use has not been commenced in Brazil after the passageof 5 years from its granting date or if its use has been interrupted for more than 5 consecutive yearsor, further, if during this period, the trademark has been used with a modification altering its primitivedistinctive characteristics.Following the Paris Union Convention for the Protection of Industrial Property (art. 6 bis 1), Law9,279/96 left it clear that well-known trademarks, including service trademarks, enjoy specialprotection, regardless of whether they have been previously applied for or registered in Brazil.However, there is no objective criterion to classify a trademark as a “well-known” trademark; this willbe decided on a case by case basis based on the documents submitted by the applicant showing thatthe trademark is “well-known”.In 2013, the Brazilian Patent and Trademark Office (INPI) published Resolution 107/13, whichregulates the procedures for obtaining protection to famous marks. Famous marks, unlike “wellknown”trademarks, enjoy protection in a range of specialties, that is, they are not related to only onespecific activity carried out by their owner.The law also provides for the punishability of crimes against industrial property, including patents,industrial designs, trademarks, geographical and other designations, and against unfair competition,also consolidating the dispersed rules on the subject.Trademarks, patents and industrial designs shall be registered at the Brazilian Patent and TrademarkOffice (INPI).Moreover, the acts and contracts related to the licensing of industrial property (use of trademarks andexploitation of patents), technology transfer, franchise, technical, scientific and other support servicesare subject to registration with INPI. The said registration is a condition for:a) the publicity, i.e., the validity of the acts or contracts before third parties;b) the remittance abroad of payments due, within the legal limits;c) the tax deductibility of the amounts paid, within the limits of the law.Trademark and patent royalty payments are only permitted in the cases of invention or registration oftrademarks granted by INPI. Trademarks or patents that have merely been applied for, but are notregistered, entitle their holders to enter into licensing agreements, but do not make the receipt ofremuneration as a result of the license established lawful. The privilege or registration of an extincttrademark, or trademark in the process of annulment or cancellation, or privilege or registration of atrademark whose owner is not eligible for remuneration, will not qualify for royalties.25