The National Institute of Industrial Property (“INPI”) has established, through Resolution 233/2023, new criteria for rectifications and reclassifications, within the framework of trademark renewal procedures.
Since the first reclassification instrument, contained in Disposition 7/84, new versions of the list of the Nice Classification (NCL) have emerged due to the incorporation of new parameters and the identification of errors. Recently, the INPI’s Committee of Experts issued a new report based on a comprehensive review of various editions of the NCL. The results of the analysis were categorized in five groups, ranging from errors not noticed by the Institute during the initial analysis and granting of trademarks, to modifications in the classification.
The results have been divided into the following groups: (1) Goods and services incorrectly named (masked passes); (2) Goods and services incorrectly named under National Disposition 7/84; (3) Goods and services incorrectly named due to nomenclature error and/or accepted at the time of filing the application; (4) Goods and services that were listed in the reclassification table according to the denomination as filed in the new class; and (5) Goods and services that duplicated the same position in the nomenclature and were included as different in the reclassification table.
- Non-notified or “undercover pass-through” transfers: these are transfers that were not noticed by the World Intellectual Property Organization (WIPO). For instance, dental floss, previously included in Class 10, is now classified as dental floss in Class 21.
- Mistakes in transitions from national to international classes: this refers to errors outlined in Disposition 7/84. Some examples include: live shellfish that were incorrectly categorized in Class 29 instead of their correct classification in Class 31, or paper files that were in Class 3 and belong to Class 8.
- Misclassified goods: in these cases the products were placed in incorrect classes due to nomenclature errors and/or mistakenly accepted at the time of filing the trademark application. For example: medicinal aftershave lotions, pharmaceutical and veterinary lotions were previously categorized under Class 3 but should actually be classified under Class 5.
- Products incorrectly listed in the grid: these are elements that were reclassified using a general terminology. This is the case of metal spurs, which were moved from Class 6 to Class 18 under the general term “spurs”, or tea balls made of precious metals, previously in Class 14, that were moved to Class 21, under the general term “tea balls”.
- Duplicate items considered as distinct products: in this group are those products that, being the same, were listed in the conversion table with different names. For example, tea strainers made of precious metals and tea filters made of precious metals, both belonging to the same Class 21, are essentially the same product, but were categorized differently in the table.
As a result, and with the Provision currently in force, the recommendation at the time of renewing a trademark is to verify whether it has been affected by this resolution, and if so, reclassify it at the time of renewal. If an error is identified in a trademark that has already been renewed, rectification can be pursued within 10 working days.
The INPI has clarified that this provision does not intend to affect the rights of third parties, but rather to rectify the errors. Therefore, phonetic searches will be conducted and each particular case will be analyzed when applications are particularly affected by this provision.
