After much speculation and decades of debates, Brazil finally joined the Madrid Protocol in 2019. As of 2 October of that year, the Madrid System became effective in the country. This follows the global norm whereby national and international trade mark holders may now avail of two different paths to obtain trade mark protection. The advantages of having two registration systems are many (especially in a jurisdiction that follows the first-to-file principle, and where prior use is not required to obtain registration).
Brazil’s accession has been viewed as crucial to increasing the Madrid Protocol’s footprint in LATAM. Recent surveys show that Brazil’s population reached its 215.8 million mark in January 20231. As South America’s largest country and the world’s eleventh economy2, Brazil can influence similar movements from other Latin-American countries, such as Chile3 and Belize4, which have plans to attract foreign investments.
However, awareness must be raised concerning the international system and the articularities surrounding its adoption.
If Brazil is seen as a reference for others planning to adhere to the Madrid Protocol, a lesson or two can be learned from their experience.
RUSHING TO ADHERE TO THE MADRID PROTOCOL AND THE LACK OF HARMONISATION
The Brazilian Industrial Property Law (BIPLC) is relatively recent (1996). It represents an important achievement of the Brazilian IP protection system, with provisions regarding substantive law and procedural rules, including clauses referring to remedies and penalties. Brazil has signed both the Paris Convention and the TRIPS; therefore, the Paris Convention’s basic principles apply to filed and registered trade marks in the country. The IP law is a federal law, and it should be applied and enforced homogeneously throughout the Brazilian territory.
Despite Brazil’s accession to the Madrid Protocol, the BIPLC did not go through amendments or changes by the Brazilian Congress. The Brazilian Patent and Trade Mark Office (‘INPI’ in Portuguese) has the discretion to manage procedures, for example, involving the prosecution of a trade mark application until registration, so long as it does not conflict with provisions of the BIPLC.
That said, there have been conflicts concerning what the INPI is establishing as procedures related to the Madrid Protocol, and what is established by the BIPLC. And this brings us to a highly relevant issue when working with the Madrid Protocol regarding powers of representation.
The INPI has stated in meetings with local IP associations that holders are not required to appoint a local representative to monitor Brazilian designations. However, Brazilian law requires foreign trade mark registrants to appoint a local representative with powers to receive the summons5. This requirement exists in other federal laws involving foreign entities with interests or assets in Brazil. Still, the contradiction between what the INPI and the law says generates valid concerns for foreign titleholders.
For context, the requirement for local representation was established in the BIPLC of 1996 because of procedural rules in litigation involving trade marks prosecuted by the INPI. It specifically requires that local representation be established for administrative and judicial procedures and with explicit powers to receive letters of summons. In addition – and this is still a concerning issue – the law established that foreign entities that do not comply with this requirement could have their trade mark registration cancelled.
The requirement ensures an effective right to challenge a trade mark registration through the court system. Otherwise, the foreign titleholder would have to be served through a rogatory letter, increasing litigation costs if no judicial co-operation treaty exists between Brazil and the country of the registrant. This situation would confront one of our constitutional prerogatives and principles: access to justice in a reasonable time frame.
That said, the use of a local counsel is encouraged to monitor local proceedings and assist in the regular prosecution as determined by local law, given that the legislature has not removed these requirements of the BIPLC. So even if the INPI is not currently enforcing this requirement, it may become a factor in disputes involving other parties seeking to cancel a trade mark registration owned by a foreign entity without local representation.
Various other issues require foreign applicants’ attention, including deadline extensions, the local language, and INPI examination peculiarities. It will not be possible to discuss these extensively. Still, they serve as examples of procedures and requirements that can be uncommon for foreign applicants. Unfortunately, the INPI overlooked harmonising these rules and procedures in a hurry to adhere to the Protocol.
A FEW PARTICULARITIES OF THE BRAZILIAN TRADE MARK PROTECTION SYSTEM
Considering the referred lack of harmonisation, careful attention should be drawn to certain issues. Contrary to specific jurisdictions, the INPI does not allow extensions of deadlines, except for the payment of registration and renewal fees. Appeals and replies to third-party petitions (i.e. oppositions, nullity claims, non-use cancellation actions, among other relevant administrative defense measures) are rights subject to statutory (non-extendible) terms. Also, since the INPI will treat all Brazilian designations as locally filed applications for examination purposes, Portuguese will be the official language for any type of communication. Office actions are also often raised, and local support can often prevent unforeseen expenses or consequences.
As further examples, the BIPLC also establishes that an applicant must be engaged in the field of activity related to their marks and the adequacy to this legal provision can be raised by the BPTO at any time during the prosecution phase. Going further, when recording an assignment, a trade mark holder must secure that all identical or similar marks – when they identify the same or related goods – are included in the referred assignment. Otherwise, these marks will be automatically cancelled.
Though titleholders are not required to respond to an opposition in Brazil – and a designation is not deemed abandoned if the holder fails to file a reply – the INPI currently does not communicate to WIPO notices of opposition, which are solely published in the Registrar’s Official Bulletin. That said, monitoring IRs designating Brazil and submitting defenses on time can be crucial for maintaining the integrity of one’s trade mark portfolio in the country. Acting preventively may ultimately save on costs.
Given the novelty of Brazil’s accession to the Madrid Protocol, several rules still require harmonisation as exposed above. While there is a discussion to be settled about the necessity of local counsel to be appointed to IRs designating Brazil, in practical terms the benefits seem to outweigh the costs.
With time the INPI should improve standards to ensure clarity to trade mark holders and practitioners. As the Madrid Protocol community continues to grow, it is important to keep observing how the implementation of the Protocol’s rules unfold in each jurisdiction. A continuous exchange of experiences between countries and practitioners is of great value and adds to the common goal to achieve a sustainable trade mark protection system throughout Latin America.
1 Kemp, Simon. ‘DIGITAL 2023: BRAZIL.’ Data Reportal, 12 February 2023.
2 Ferrari, Hamilton. ‘Brasil Volta Ao Top 10 No Ranking De Maiores Economias Do Mundo.’ Poder 360, 2June 2022.
3 Arroyo Meneses, Cristina. ‘Chile’s Accession To The Protocol Adds To The List Of Countries In The Americas That Belong To The Madrid System For The International Registration Of Trade marks.’ Mondaq. 22 January 2023.
4 ‘Belize Joins the Madrid System.’ WIPO, 6 December 2022.
Article published in ECTA Bulletin.