Madrid Protocol in Brazil: A analysis of the practical effects

26/04/2021

Madrid Protocol in Brazil: A analysis of the practical effects

The Brazilian Patent and Trademark Office (BPTO) still tends to be conservative in its approach towards trademark registration. Brazilian law allows registration only of trademarks that are visually perceptive, and this often causes problems in a modern and fast-changing world.

However, in what can be described as a radical step into the present, the country recently ratified the Madrid Protocol, which finally became operational in Brazil on October 2, 2019 (under Decree No. 10,033).

In this article, we provide some basic background and answer key questions that often arise on the topic. Thereafter, we briefly discuss how the still recent implementation of the Protocol has changed the actual position for trademarks in Brazil.

What is the Madrid Protocol?

The Madrid Protocol is part of the Madrid System for Registration of Marks (The Madrid System) that is a centrally administered by WIPO. It allows for numerous trademark registrations across separate jurisdictions. The Protocol was first created in 1989 and came into force in 1996.

What is the Difference between Madrid Agreement and Madrid Protocol?

It is important to understand that two separate and independent treaties govern the registration of trademarks in multiple jurisdictions around the world. These are the Madrid Agreement and the Madrid Protocol.

The Protocol can be understood as a successor of the agreement, maintaining its objective to create a single and accessible international system for filing trademarks.

Together, the two treaties compose the Madrid System, which is administered centrally by WIPO. It allows users to obtain numerous trademark registrations in separate jurisdictions.

When did Brazil join the Madrid Protocol?

In 2019, Brazil took the final steps necessary to ratify the treaty, which entered into force on October 2, 2019 (by Decree No. 10,033).

Who may use the Madrid Protocol?

Natural persons or legal entities can make applications for protection within a country that is a party to the Protocol.

How does the Madrid Protocol Work?

Under the Protocol, trademark applications are initiated at national or regional offices where they are deposited. Thereafter, they are sent to WIPO and redirected to all other jurisdictions indicated by the trademark applicant.

The trademark application process then follows the procedures and legislation of each country or region, maintaining the autonomy of each jurisdiction to decide whether to register the trademark within that territory.

What must you do to apply for international registration under the Madrid Protocol?

To submit an international application under the Madrid Protocol, you must first file an application in your home country trademark office.

For example, in Brazil, this application would be initiated at the Brazilian Patent and Trademark Office (BPTO). Once you file your first application, you can also begin with the international registration process. You do not need to await approval by your home country trademark office.

Some first impressions about Madrid Protocol in Brazil

It is important to understand the Madrid Protocol as part of a broader strategy for Brazil’s development. Such a big step could not have been taken without prior qualification of the existing IP infrastructure.

Through the adoption of the Madrid Protocol, the registration process for trademarks abroad has become more agile and simplified. In the past, companies wishing to register their trademark abroad had to make an individual application in each country of their choice, also bearing the respective costs in each national IP office. So far, the Protocol appears to be working well from a Brazilian perspective.

Why should you use the Madrid Protocol for registration in Brazil?

The Madrid Protocol simplified the proceedings, so it is quite easy to extend an existing international registration to Brazil, besides managing renewals. Essentially, it means that you must complete only one application in your home language, which is much easier than applying with each individual country (especially if you want to register in many countries).

The Madrid Protocol can also save applicants costs. Although you will still need to pay a fee to each country where your trademark is ultimately registered, you will only pay one application fee. If there are no complications at the national level, this may significantly reduce the overall cost of your international filing.

The use of a local counsel will only be necessary if the mark suffers a provisional refusal. Otherwise, in a straightforward proceeding, there is in principle no need to hire anyone to act in the case locally.

Since the Nice Classification has been widely used in Brazil for over 20 years, it does not appear that the BPTO is being more stringent when analyzing international filings towards wording and classification than it is in a regular national filing.

The BPTO will duly notify the International Bureau of the decisions concerning provisional refusals and decisions on nullity or revocation actions.

What are some of the limitations to the Madrid Protocol for registrations in Brazil?

Firstly, international registrations under the Protocol before its date of entry into force will not be available (Article 14(5) of the Protocol). Brazilian designations will only be available for foreign filings after October 2, 2019.

In addition, division or merger of an international registration has no effect in Brazil and Multiclass filings are still not available.

Finally, the applicant must declare in the filing form that it is effectively engaged in the business in connection with the goods and services for which Brazil is being designated.

Is it better to avoid the Madrid Protocol in some cases?

Brazilian IP law requires that the applicant appoint a local representative to service their registrations. This requirement was created to enable any party to challenge a mark in Brazil in a cost-effective way, otherwise the titleholder would have to be served through a rogatory letter increasing litigation costs if no judicial cooperation treaty was in place between Brazil and the country of the applicant/registrant.

Multiclass filings are not yet available in Brazil. So, an international registration designating Brazil and covering more than one class will be automatically split into separate applications (one per class), being subject to individual examinations on both formalities and absolute grounds. This may change if multiclass filings are accepted in future.

Importantly, note that the international bureau will not be informed of certain local proceedings (such as of the filing of oppositions) so the registrant of an international registration in Brazil may not be properly advised of setbacks and potential alternatives to overcome a provisional refusal.

Therefore, in specific cases, it may still be better to avoid the Madrid Protocol.

Why should you appoint local counsel to monitor your application under the Madrid Protocol?

Acting preventively may save costs in several ways. Having a local partner to assist you during the trademark prosecution process and keeping a close eye on developments may be a good alternative in order to secure trademark protection in the fastest and most effective way in Brazil.

Why choose Daniel Law as your local Partner?

Companies interested in the Brazilian market need to be vigilant as to how their trademarks will be represented in the country. At Daniel law, we offer a complete range of services related to trademark law.

We also offer many competitive advantages, from digitalization and process automation to our Latam Hub, allowing us to access IP services right across Latin America and the Caribbean, through a single point of contact.

In relation to Trademarks in particular, we have developed proprietary software capable of reading WIPO’s database to seamlessly monitor all the developments of an international registration as it is prosecuted by the BPTO.

Madrid Protocol in Brazil – some final considerations

By adopting the Madrid Protocol, Brazil has taken a big step into the present, radically changing the trademark landscape in the country in ways that are both predictable and unpredictable.

With these changes, it is imperative that companies doing business in Brazil have a comprehensive plan in place to ensure that this change does nothing to impede business operations and relationships.

Many companies are currently developing strategic trademark plans, working to get total visibility on their revenue through trademark licensing, and ensuring that, no matter what the future brings, they are ready for seamless continuity in all operations.

This is certainly the wisest course of action considering the changing environment for trademarks in Brazil.

Please contact us if you would like to discuss the matter further and receive more detailed information on using the Madrid Protocol for registrations in Brazil.

The Brazilian Patent and Trademark Office (BPTO) still tends to be conservative in its approach towards trademark registration. Brazilian law allows registration only of trademarks that are visually perceptive, and this often causes problems in a modern and fast-changing world.

However, in what can be described as a radical step into the present, the country recently ratified the Madrid Protocol, which finally became operational in Brazil on October 2, 2019 (under Decree No. 10,033).

In this article, we provide some basic background and answer key questions that often arise on the topic. Thereafter, we briefly discuss how the still recent implementation of the Protocol has changed the actual position for trademarks in Brazil.

What is the Madrid Protocol?

The Madrid Protocol is part of the Madrid System for Registration of Marks (The Madrid System) that is a centrally administered by WIPO. It allows for numerous trademark registrations across separate jurisdictions. The Protocol was first created in 1989 and came into force in 1996.

What is the Difference between Madrid Agreement and Madrid Protocol?

It is important to understand that two separate and independent treaties govern the registration of trademarks in multiple jurisdictions around the world. These are the Madrid Agreement and the Madrid Protocol.

The Protocol can be understood as a successor of the agreement, maintaining its objective to create a single and accessible international system for filing trademarks.

Together, the two treaties compose the Madrid System, which is administered centrally by WIPO. It allows users to obtain numerous trademark registrations in separate jurisdictions.

When did Brazil join the Madrid Protocol?

In 2019, Brazil took the final steps necessary to ratify the treaty, which entered into force on October 2, 2019 (by Decree No. 10,033).

Who may use the Madrid Protocol?

Natural persons or legal entities can make applications for protection within a country that is a party to the Protocol.

How does the Madrid Protocol Work?

Under the Protocol, trademark applications are initiated at national or regional offices where they are deposited. Thereafter, they are sent to WIPO and redirected to all other jurisdictions indicated by the trademark applicant.

The trademark application process then follows the procedures and legislation of each country or region, maintaining the autonomy of each jurisdiction to decide whether to register the trademark within that territory.

What must you do to apply for international registration under the Madrid Protocol?

To submit an international application under the Madrid Protocol, you must first file an application in your home country trademark office.

For example, in Brazil, this application would be initiated at the Brazilian Patent and Trademark Office (BPTO). Once you file your first application, you can also begin with the international registration process. You do not need to await approval by your home country trademark office.

Some first impressions about Madrid Protocol in Brazil

It is important to understand the Madrid Protocol as part of a broader strategy for Brazil’s development. Such a big step could not have been taken without prior qualification of the existing IP infrastructure.

Through the adoption of the Madrid Protocol, the registration process for trademarks abroad has become more agile and simplified. In the past, companies wishing to register their trademark abroad had to make an individual application in each country of their choice, also bearing the respective costs in each national IP office. So far, the Protocol appears to be working well from a Brazilian perspective.

Why should you use the Madrid Protocol for registration in Brazil?

The Madrid Protocol simplified the proceedings, so it is quite easy to extend an existing international registration to Brazil, besides managing renewals. Essentially, it means that you must complete only one application in your home language, which is much easier than applying with each individual country (especially if you want to register in many countries).

The Madrid Protocol can also save applicants costs. Although you will still need to pay a fee to each country where your trademark is ultimately registered, you will only pay one application fee. If there are no complications at the national level, this may significantly reduce the overall cost of your international filing.

The use of a local counsel will only be necessary if the mark suffers a provisional refusal. Otherwise, in a straightforward proceeding, there is in principle no need to hire anyone to act in the case locally.

Since the Nice Classification has been widely used in Brazil for over 20 years, it does not appear that the BPTO is being more stringent when analyzing international filings towards wording and classification than it is in a regular national filing.

The BPTO will duly notify the International Bureau of the decisions concerning provisional refusals and decisions on nullity or revocation actions.

What are some of the limitations to the Madrid Protocol for registrations in Brazil?

Firstly, international registrations under the Protocol before its date of entry into force will not be available (Article 14(5) of the Protocol). Brazilian designations will only be available for foreign filings after October 2, 2019.

In addition, division or merger of an international registration has no effect in Brazil and Multiclass filings are still not available.

Finally, the applicant must declare in the filing form that it is effectively engaged in the business in connection with the goods and services for which Brazil is being designated.

Is it better to avoid the Madrid Protocol in some cases?

Brazilian IP law requires that the applicant appoint a local representative to service their registrations. This requirement was created to enable any party to challenge a mark in Brazil in a cost-effective way, otherwise the titleholder would have to be served through a rogatory letter increasing litigation costs if no judicial cooperation treaty was in place between Brazil and the country of the applicant/registrant.

Multiclass filings are not yet available in Brazil. So, an international registration designating Brazil and covering more than one class will be automatically split into separate applications (one per class), being subject to individual examinations on both formalities and absolute grounds. This may change if multiclass filings are accepted in future.

Importantly, note that the international bureau will not be informed of certain local proceedings (such as of the filing of oppositions) so the registrant of an international registration in Brazil may not be properly advised of setbacks and potential alternatives to overcome a provisional refusal.

Therefore, in specific cases, it may still be better to avoid the Madrid Protocol.

Why should you appoint local counsel to monitor your application under the Madrid Protocol?

Acting preventively may save costs in several ways. Having a local partner to assist you during the trademark prosecution process and keeping a close eye on developments may be a good alternative in order to secure trademark protection in the fastest and most effective way in Brazil.

Why choose Daniel Law as your local Partner?

Companies interested in the Brazilian market need to be vigilant as to how their trademarks will be represented in the country. At Daniel law, we offer a complete range of services related to trademark law.

We also offer many competitive advantages, from digitalization and process automation to our Latam Hub, allowing us to access IP services right across Latin America and the Caribbean, through a single point of contact.

In relation to Trademarks in particular, we have developed proprietary software capable of reading WIPO’s database to seamlessly monitor all the developments of an international registration as it is prosecuted by the BPTO.

Madrid Protocol in Brazil – some final considerations

By adopting the Madrid Protocol, Brazil has taken a big step into the present, radically changing the trademark landscape in the country in ways that are both predictable and unpredictable.

With these changes, it is imperative that companies doing business in Brazil have a comprehensive plan in place to ensure that this change does nothing to impede business operations and relationships.

Many companies are currently developing strategic trademark plans, working to get total visibility on their revenue through trademark licensing, and ensuring that, no matter what the future brings, they are ready for seamless continuity in all operations.

This is certainly the wisest course of action considering the changing environment for trademarks in Brazil.

Please contact us if you would like to discuss the matter further and receive more detailed information on using the Madrid Protocol for registrations in Brazil.











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