INTERNATIONAL TRADEMARK LICENSE AGREEMENTS: MATERIAL CHANGE IN BRAZILIAN REGULATION
This is to inform our clients that the Brazilian PTO has just passed an administrative ruling (Technical Report No. 00035/2020/CGPI/PFE-INPI/PGF/AGU) introducing a material change in regulation concerning international Trademark License Agreements. Until now, the remittance of royalties payable under TM License Agreements was subject to the prior granting of the TM registrations in Brazil, meaning that Brazilian TM applications could not generate the payment of royalties abroad. Upon the issuance of said administrative ruling, Brazilian licensees finally became allowed to make the remittance of royalties to foreign licensors in consideration for the use of trademarks still under application status in the Country.
Furthermore, the PTO clarified that the remittance of royalties may encompass the period comprised between the filing of the request for registration of the relevant TM License Agreement and the date of registration thereof.
Finally, the remittance of royalties made during the application’s lifetime shall not be affected by the denial of the licensed TM applications. Naturally, new remittances will not be allowed.
Please feel free to get in contact with us in case of any queries.