On the transferability of the right in trademark property

Abstract

The study analyses the transferability of intangible property and the problem of intangible assets transferred or assigned without compliance with the specific rules of the special legislation. It starts from the question whether the inter partes act concerning the ownership of an industrial property right, without timely recordal and publication of the subjective change by the INPI, confers on the beneficiary standing to act in defence of the right against third parties. The work contrasts the regime of the common law of property with that of industrial property, examines Article 5, XXIX, of the Federal Constitution, Articles 129, 135 and 137 of Law No. 9,279/96 and INPI Resolution No. 128/2006, distinguishes recordal from annotation and discusses the recordal of the trademark assignment as a constitutive element of erga omnes rights, drawing on legal writing and on judicial precedents. It holds that the transfer of the trademark registration requires a specific act of conveyance and that recordals take effect as against third parties from their publication in the official bulletin, so that standing to defend the trademark derives from ownership constituted by a derivative registration act, conditioned upon recordal and its publication.