News | The BRPTO will start receiving industrial design applications through the Hague System as from August 1, 2023.

On July 4, 2023, the BRPTO published Ordinance No. 25/2023, which provides for Industrial Design Registrations under the Hague Agreement. The adhesion of the Hague Agreement was concluded in February 2023, making Brazil the 79^th  member of the Hague Union.

This new Ordinance covered several important topics, and we summarized some of them below:

• When acting directly before the BRPTO, the owner of an International Registration domiciled abroad must appoint and maintain a duly qualified attorney domiciled in Brazil, with powers to represent him/her administratively and judicially, and to receive summons
• The International Registration designating Brazil will have the same effects as an application for an Industrial Design Registration filed in the country, from the date of such designation. Moreover, Industrial Designs subject to designations in Brazil will be examined under with the provisions of Law No. 9,279, of May 14, 1996, and the conditions established by the BRPTO
• Any Industrial Design designated in Brazil will be granted the same protection conferred to an Industrial Design registered directly before the Brazilian PTO, under the terms of Law No. 9,279, of May 14, 1996, as long as the BRPTO follows the established by the Ordinance
• When it comes to the recognition of the priority right, the owner of the International Registration must submit to the BRPTO, within 90 (ninety) days, counted from the date of the Registration publication by the International Bureau, a copy of the valid original document, which must bear the date, number and figures of the corresponding application, followed by its simple translation. In case the document of origin is not presented within the established term, the priority date will be disregarded to consider the filing date of the International Registration
• The BRPTO will accept the presentation of documents proving the publication and the date of publication of the Industrial Design to prove the non-harmful disclosure of the Industrial Design that is the object of the International Registration. It should be noted that the Brazilian Office will not accept documents proving the non-harmful disclosure when exceeding 180 (one hundred and eighty) days before the filing date of the international application or claimed priority
• According to Art. 10 of such Ordinance, within 6 months, counted from the Brazilian designation notification, the BRPTO will forward to the International Bureau:

I – notification of rejection of protection; or

II – declaration of granted protection, referring to the approval of the designation.

• According to art. 11, the BRPTO can reject the effects of an International Registration, based on the following:

I – the reproductions of the International Registration do not represent the Industrial Design and its variations clearly and sufficiently;

II – the International Registration includes more than one object, contrary to the provisions of the caput of art. 104 of Law No. 9,279, of May 14, 1996; or

III – the Industrial Design object of the International Registration does not correspond to the other provisions outlined in Law No. 9.279, of May 14, 1996.

• 12 establishes that, in case of the rejection of an International Registration including more than one object, the owner must indicate the Industrial Design to be maintained within 60 (sixty) days counted from the rejection publication
• 13 of the Ordinance establishes that, if appropriate, grant protection to an Industrial Design that is the subject of an International Registration in relation to which the BRPTO has notified a rejection of its effects in accordance with art. 11, the BRPTO must notify the International Bureau of the following:

I – the dismissal of the rejection in its whole or part, indicating the referring configurations; or

II – the declaration of granted protection after a rejection decision in whole or part, indicating the referring configurations when appropriate.

• According to Art. 16, the International Registration designating Brazil will be renewed every 5 (five) years upon payment to the International Bureau with a maximum duration of protection in Brazil of 25 (twenty and five) years, counted from the filing date of the International Registration, pursuant to arts. 108 and 120 of Law No. 9.279, of May 14, 1996
• According to Art. 17, requests for annotations referring to an International Registration designating Brazil must be sent by the owner directly to the International Bureau
• Article 18 establishes that the following annotations, when made in the international registry concerning an International Registration and applicable to Brazil as a designated contracting party, will produce the same effects as an annotation made before the BRPTO:

I – change of name and address of the owner;

II – change of ownership (when accompanied by supporting documentation);

III – resignation of designation; and

IV – cancellation of the International Registration.

The Ordinance provides that the owner of the International Registration will be granted the same deadlines for appeals provided for in Law No. 9,279, of May 14, 1996. However, it should be noted that the appeals will not be accepted for declarations of granted protection, and the rejection highlighted by items I and II of §1 of Art. 10.

Finally, art. 21 establishes that, when notified by the International Bureau of an amendment relating to an International Registration, the BRPTO may re-examine the designation. In such cases, the BRPTO can submit to the International Bureau, within 6 (six) months counted from the notification publication, a rejection based on the new examination.

The Ordinance will be enacted on August 1st, 2023. From this date, the BRPTO will start receiving applications through the Hague System.

For additional information, feel free to contact us at international@simoes-ip.com