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INPI-BR is introducing a new procedure for all trademark opposition and administrative nullity proceedings before INPI-BR. As of April 2013, this new procedure, which offers a voluntary mediation option to parties, will be available in trademark proceedings before INPI-BR. This document provides information on the new procedure. This document provides information on the new procedure. A chart outlining the procedure is set out at Annex A.
1. Submission to Mediation
After parties have filed opposition or administrative nullity proceedings, INPI-BR’s notice of acknowledgement encourages parties to consider mediation, by providing the following documents:
- (i) the present document providing information on the mediation option;
- (ii) a “Notification to INPI-BR Form” to be jointly completed and to be returned to INPI-BR by the Party who initiates the proceedings (i.e., the trademark opponent or the applicant for the administrative nullity of a registered trademark); and
- (iii) a form entitled “Agreement and Request for Center for Intellectual Property Protection (CEDPI)/ WIPO Arbitration and Mediation Center (WIPO) Mediation in INPI-BR Proceedings” for parties’ adoption if they wish to submit to CEDPI/WIPO Mediation, to be filed with CEDPI/WIPO Center.
After consideration and discussion between themselves, parties should jointly complete the Notification to INPI-BR Form indicating whether or not they wish to submit to mediation at INPI-BR Center or WIPO Center. The party who initiated the INPI-BR Center Mediation or the WIPO Mediation in INPI-BR Proceedings (initiating party) has the responsibility to return the Notification to INPI-BR Form signed by both parties.
The ongoing proceedings at INPI-BR are in any event suspended from the date of the filing of the Notification to INPI-BR Form.
2. Filing the Request for CEDPI or WIPO Mediation
(a) Parties Submit to CEDPI or WIPO Mediation
- Disputes where both parties are domiciled in Brazil, the Agreement and Request for Mediation before INPI-BR Proceedings shall be filed with CEDPI, in accordance with the INPI-BR Mediation Rules.
- Disputes where one or both parties are domiciled outside Brazil, the Agreement and Request for Mediation before INPI-BR Proceedings shall be filed with the WIPO Center, in accordance with the WIPO Mediation Rules.
If the parties submit to mediation at CEDPI or WIPO Center, they should file their Agreement and Request for CEDPI or WIPO Mediation in INPI-BR Proceedings with CEDPI or WIPO Center.
The CEDPI or WIPO mediation procedure commences with the filing of the completed and signed Agreement and Request for CEDPI or WIPO Mediation in INPI-BR Proceedings. Following receipt thereof, CEDPI or WIPO Center will contact the parties regarding the next steps of the mediation procedure, the appointment of the mediator and the applicable fees. While the parties are free to identify themselves a suitable candidate for such appointment, CEDPI will refer the parties to the published list of WIPO/INPI-BR Panel of Neutrals for Intellectual Property Disputes Pending before INPI-BR. The WIPO Center is available to assist with the provision of a shortlist of qualified mediator candidates taking account of the requirements of the case.
A reduced not-for-profit Schedule of Fees for administration fees and mediator fees will apply. The parties’ ability to terminate the mediation at any time helps to contain the cost of this informal procedure.
(b) Parties do not Submit to CEDPI or WIPO Mediation
If the parties do not submit to mediation at CEDPI or at WIPO Center, INPI-BR will proceed to the analysis of the evidence provided and issue timelines for the filing of further evidence, if applicable.
3. Submission to Mediation at Any Stage of Proceedings
In general, at any time after proceedings are initiated and before a decision is issued, parties may submit to mediation at CEDPI or at WIPO Center.
Thus, parties may also submit to mediation before the filing of the opposition, by filing their Agreement and Request for CEDPI Mediation in INPI-BR Proceedings with CEDPI or the Agreement and Request for WIPO Mediation in INPI-BR Proceedings with the WIPO Center. The initiating party should inform INPI-BR in writing accordingly, including whether it seeks a suspension of the INPI-BR proceedings. In such a case, the initiating party should inform INPI-BR in writing accordingly, including the period of time it seeks a suspension of the INPI-BR proceedings, so that appropriate directions on the proceedings may be given.
During a suspended period, deadlines for the filing of evidence or any other procedure will not apply. Deadlines will re-start after the suspended period where the dispute is not settled or not fully settled.
4. Mediation Outcomes
The following are possible outcomes of the CEDPI or WIPO Mediation:
(i) Parties fully settle
If the parties fully settle their dispute, the initiating party is to inform INPI-BR in writing that the matter has been settled and the parties have to take the necessary steps to close the proceedings before INPI-BR. This includes such steps as necessary to either withdraw the trademark opposition or application for nullity (by the initiating party) or to withdraw the trademark application (by the trademark applicant). If the settlement affects the trademark application or registration in any way, the trademark applicant or proprietor will have to comply with the relevant procedure to amend or cancel (fully or partially) the trademark application or registration, including filing the appropriate forms for INPI-BR to process such amendment or cancellation.
(ii) Parties submit to INPI-BR adjudication for outstanding issues
If the parties partly settle their dispute and the remaining issues are subject to adjudication at INPI-BR, or if the parties do not manage to settle any aspect of their dispute, the initiating party is to inform INPI-BR in writing accordingly.
INPI-BR will then resume conduct of the proceedings.
5. Further information
CEDPI
Further information on CEDPI Mediation generally is available at:
The applicable INPI-BR Mediation Rules are available at:
Information on INPI-BR is available at:
WIPO Center
Further information on WIPO Mediation generally is available at:
https://www.wipo.int/amc/en/mediation/.
The applicable WIPO Mediation Rules are available at:
https://www.wipo.int/amc/en/mediation/rules/index.html
Parties may also refer to the Guide to WIPO Mediation available at:
https://www.wipo.int/publications/en/arbitration/449/wipo_pub_449.pdf.
Information on the WIPO Center is available at:
https://www.wipo.int/amc/en/center/background.html