The prior user rights aim to guarantee to the user in good faith a certain trademark that has been filed and acquired by someone else.
The §1 of art. 129 of Brazilian Industrial Property Law (Law No. 9,279/96) requires, besides the good faith, proof of use of the trademark to distinguish or certify an identical or similar product or service at least 06 (six) months before the filing of the application.
Since Brazilian law does not stipulate how to exercise prior user rights, especially regarding the place of such claim, whether before Brazilian Patent and Trademark Office (BPTO) or the courts, some precedents provide guidance on how to act.
In trademark nullity lawsuits in which prior user rights are invoked, BPTO is currently claiming that only administratively would the party be able to require precedence to a trademark registration.
However, the argument does not seem to meet the legislative intent with the §1 of art. 129 of Brazilian Industrial Property Law, nor does it appear to be aligned with the constitutional guarantee of access of the Judiciary. Read more