BRPTO issues ordinance establishing procedures for the protection of industrial designs under the Hague Agreement

July 6, 2023

(Federal Register of July 04, 2023)

The BRPTO, through the Federal Register of July 04, 2023, issued its Ordinance #25/2023, which provides for the prosecution of industrial design registrations under the Hague Agreement. Said Ordinance provides rules for applications which have Brazil as designated contracting party. Ordinance #25/2023 was also published, on that same date, in the BRPTO’s Official gazette #2739, and it will come into force on August 1st, 2023.

In other words, this means that as of August 1st, 2023, through a simplified procedure with reduced costs, it will be possible for Brazilian applicants to secure design protection simultaneously in multiple countries or regions through a single international application filed with the International Bureau of the World Intellectual Property Organization (WIPO). Likewise, applicants from other contracting parties will be able to designate Brazil upon filing international design applications and seek the protection of the claimed industrial designs here.

In spite of that, it should be noted that, according to Ordinance #25/2023, international industrial design applications that designate Brazil will still be examined under the provisions of the Brazilian Law #9,279/96 (Brazilian IP Statute) and meet further requirements established by the BRPTO. In addition to that, in order to act before the BRPTO, international design registrations’ titleholders need to permanently maintain a duly qualified resident in Brazil with powers to represent them administratively and judicially, including for receiving summons.

Regarding the timing to issue its decision, the BRPTO must send to the International Bureau a notification of refusal or grant of the protection within a six-month term counted from the notification of Brazil’s designation.

In the event of a refusal of the protection, the notification sent to the International Bureau will contain i) information on objections raised during the examination, ii) the suspension of the examination due to lawsuits, or iii) the decision for rejecting the requested designation.

The renewal of the design registration, the ownership transfer recordation, the change of address or name recordation, waiver of designation or international registration cancellation shall be managed directly through WIPO and will have the effect of a recordation made directly before the BRPTO.

Ordinance #25/2023 comes into force on August 1, 2023, and its Portuguese version is available here. Please contact us for the English version. We will be glad to assist you with more information on this matter at industrialdesign@lickslegal.com.