BRAZIL ADOPTS THE INTERNATIONAL TRADEMARK
CLASSIFICATION AS OF JANUARY 03, 2000.

On September 09, 1999 the Brazilian Patent & Trademark Office (BPTO) issued Normative Act 150/99, which was published at the Official Gazette of October 19, announcing the adoption of the International Classification of Goods and Services as of January 03, 2000.

The International Classification, instituted by the Nice Agreement on June 15, 1957, revised in Stockholm on 1967 and in Geneva on 1977, and amended on September 28, 1979, has been adopted not only by the 46 signatory countries of the agreement, but also by the other 84 countries and 2 organizations, and represents a basic reference in what concerns an international padronization of the classification of goods and services for the purpose of registration of marks. Even though Brazil has not adhered to the Nice Agreement, the BPTO is exercising the faculty of adopting the terms of this international classification.

Normative Act 150/99 provides that:

• each trademark application may cover only one international class and the goods and services must be specified;
  
  
• trademark applications/registrations applied for/in force before January 03, 2000, must, when of the payment of their issuance/renewal fees, comply with the provisions mentioned above;
  
  
• in case of non-compliance with such provisions an official action shall be raised by the examiner;
  
  
• guidelines for the conversion to the new classification system will be published by the BPTO.
  
  

Resulting of studies seeking the compatibility of the current Brazilian Classification of Goods and Services to the Nice Classification, the adoption of the International Classification system is an effort to give more celerity to the analysis of the applications, as well as to simplify and modernize the BPTO’s procedures. It remains to be seen whether these goals will be accomplished by the BPTO.

The classification system adopted so far in Brazil, established by Normative Act 51, of 1981, was somewhat based on the international classification but it has several important deviations from the international system. The Brazilian classification devides goods and services into 41 classes - 35 referring to products and 6 related to services - which are separated in sub-classes. Additionally, each application may cover only up to 3 sub-classes of a single class.

Therefore, up to now (and until December 31st, 1999), in order to file an application in Brazil it has been necessary to adequate the goods and/or services of our foreign clients' interest to the peculiar Brazilian classification system.

In view of the difference between both classification systems, sometimes the goods/services covered by a single international class could be inserted in two or more Brazilian classes, consequently leading to the increase of the total number of applications so as to embrace all the goods/services of client's interest. In such cases, two or more Brazilian applications or registrations might in the future be amalgamated into one single application or registration in an international class.

On the other hand, in other occasions goods covered by a single Brazilian class might fall in two different international classes, in which case the adaptation to the international classification might result in divisional applications.

Multiple-class applications were not allowed under the Brazilian system and shall continue not to be permissible under the international classification. Full filing fees will be charged by the BPTO for each application in a given (singular) international class. The BPTO announced that it will evaluate its filing fees during the first semester of 2000 in order to decide if the system of charging will be modified, so that the more goods or services claimed, the higher would be the official filing fee.

It should also be noted that until now there is not a clear orientation from the BPTO in what concerns the adaptation of pending applications and registrations to the international system. The BPTO must still publish revised Guidelines for Examination of Trademarks and a revised Practitioner’s Manual, with the necessary instructions regarding the amalgamation and division of trademark applications and registrations, and it is expected that these shall be available only as from December 15th, 1999.

Should you need further information, please contact any of our attorneys or e-mail us at momsen@leonardos.com.br.

MINISTRY OF THE DEVELOPMENT, INDUSTRY AND FOREIGN COMMERCE BRAZILIAN PATENT AND TRADEMARK OFFICE

OFFICE OF THE PRESIDENT - 09/09/99
NORMATIVE ACT - No. 150/99

Subject: Establishes the adoption of the International Classification of Goods and Services and other provisions

THE PRESIDENT OF THE INPI (Brazilian Patent and Trademark Office), using his prerogatives,

CONSIDERING the necessity of giving more celerity to the examination of the trademark applications, as well as to simplify and modernize the BPTO's respective procedures, making them more efficient,

CONSIDERING the modern, effective and updated mechanisms, established by the International Classification of Goods and Services, while instrument of indexation and information recovery,

CONSIDERING the necessity of adequacy of the classification of trademark registration adopted by the BPTO, with the one internationally practiced, in view of the economical globalization process, and

CONSIDERING, finally, the faculty of BPTO adopting the terms of this International Classification, independently of Brazil having joined the respective treaty, following several akin institutions of other country members of the Paris Convention,

DECIDES AS FOLLOWS:

1. Adopt, as from January 03, 2000, the International Classification of Goods and Services, presented on the Annex I, of this same Act.
   
   

2. Establish that each trademark application must cover only one international class, and obligatoryly comprise the specification of goods and services identified by the International Classification of Goods and Services.
   
   

3. Establish that the allowed applications when of the payment of their issuance fee, as well as the renewal of trademark registrations, must observe, if suitable, what is established in item 2, the limit of the granted protection being observed.
   
   

4. Determine that the non-compliance with items 2 and 3 will cause the raising of an official action.
   
   

   4.1. The objection presented to the official action will be decided by the Permanent Classification Comission, indicated in item 6 below.
   4.2. The official action not complied will lead to the definitive shelving of the Application, and to the rejection of the Renewal Request.
   4.3. The decision determining the definitive shelving of the Application will end the administrative instance.
   4.4. From the decision determining the rejection of the Renewal Request an appeal may be submitted to the BPTO's President within a 60 (sixty) day term. In case the appeal is not filed, the registration shall become extinct, by the end of its period of validity (Art. 133, §§ 1º and 2º of the Brazilian Industrial Property Law*).
   
   

5. The instructions regarding the division and amalgamation of trademark applications and registrations will be inserted in the Trademark User's Manual, to be edited by the BPTO.
   
   

6. The Trademark Directorate shall constitute a Permanent Classification Comission, for following-up the tasks of the Working Group of the World Intellectual Property Organization - WIPO’s Expert Committees, this Comission of International Classification of Goods and Services being formed by, at least, 5 (five) civil servants, all members of the BPTO's permanent staff.
   
   

7. The composition, organization and assignments of the Comission will be subject matter of regulation by the Trademark Directorate within a non-extendible 30 (thirty)day-term counted as of the period of validity of the present Normative Act.
   
   

8. The BPTO shall proceed with revisions, as to the adequacy of the technical therminologies in the Classification dealt with in whenever it becomes necessary to conform it to the original document.
   
   

9. This Normative Act will be in force on January 03, 2000, Normative Act nº 051/81 and any other provisions to the contrary being revoked.