“Not totally prepared” – Brazilian Senate approves Madrid Protocol, but concerns raised over IP office readiness

by | Jun 4, 2019 | Articles, Intellectual Property, Trademarks

  • The Brazilian Senate has approved Brazil’s accession to the Madrid Protocol
  • The international trademark system is expected to start operating in October
  • Experts tell WTR that news is positive, but IP office has a lot to do before accession

Over a decade after preparations began for Brazil to join the Madrid Protocol, the final hurdle was overcome last week when the Brazilian Senate approved the agreement text. Speaking to WTR, local experts are generally hopeful that accession will modernise the IP environment in the country, but there are questions over whether the Brazilian IP Office (INPI) will be ready for the predicted start date of October.

The prospect of Brazil acceding to the Madrid Protocol has been a long time coming. It was first raised in 2003, when the national registry’s then-president mooted the proposal to local practitioners. From there, it moved through various parts of the government; in 2006, the Brazilian Chamber of Foreign Trade (CAMEX) approved adoption, after which it was sent to the Ministry of Casa Civil to prepare a bill for the country’s Congress. However, things have moved at a snail-pace since then, stifled by a lack of urgency in the upper echelons of the executive and exacerbated by operational and backlog issues at the INPI. In 2016, however, the national government reiterated its intent to join following a visit to the country by WIPO director general Francis Gurry.

A year later, WIPO wrote about Brazil’s “progress” towards acceding to the Madrid Protocol, with the president of the Association of Brazilian IP Agents (ABAPI), Ricardo Pinho, subsequently telling WTR in May 2018 that he expected accession in the coming months. Later that year, there was the so-called “Bolsonaro bombshell”, with a far-right politician, Jair Bolsonaro, clinching victory to become the next president of Brazil – a move that created uncertainty about whether the Madrid Protocol would continue its forward momentum.

But it appears that any fears were unfounded.. Last week, May 22, the Brazilian Senate approved the text of the Madrid Protocol, which is widely seen as the last hurdle for Brazil to finally be added to the international trademark system roster. In a press release from the INPI – which predicts that the new system will start operating in October – registry president Cláudio Vilar Furtado praised the potential for the system: “Brazil’s accession to the Madrid Protocol represents the opening of the ports of 120 countries and regions to Brazilian and Brazilian brands to those countries, which represent 80% of global trade.”

That positivity has been broadly shared by most local law firm practitioners we have spoken to – although some have concerns. For example, the aforementioned Ricardo Pinho, partner at Guerra IP, told WTR this week that “it may have a positive impact for our foreign clients”, but added: “I doubt it will be positive for Brazilian companies in general, mainly because trademarks (and trademark filings) depend on the general performance of our local economy – right now, for example, the exchange rate between our local currency (Real) and the US Dollar and Euro is not favourable for our companies that export products. Therefore, the result will depend on the performance of our federal government in relation to the economy and also in relation to their plans, strategy and management for the INPI.”

Others are more positive. Eduardo Hallak from Licks Attorneys in Sao Paulo describes the move as “very positive”, set to make it “cheaper and simpler” to secure trademark protection in Brazil, and also “free the debate space to more up-to-date improvements to the IP landscape in Brazil”. André Oliveira, partner at Daniel, adds that it is a “great development” and will make Brazil’s trademark system “much more attractive and cost-effective”.

Going further, Eduardo Magalhães Machado, senior partner at Montaury Pimenta, Machado & Vieira, said he is “very happy” for a variety of reasons, explaining: “The main one is that I was a bit tired of entering into discussions with (good) clients, concerning the costs of bureaucratic services, such as filings and renewals. Then, when the moment comes to discuss real important matters – a lawsuit, for instance – the same client would remember the issue related to the costs of filings, for example, and be reluctant in talk about the costs of the lawsuit. Now, with the Protocol, despite losing the revenues from filing and renewals – another example – we will be able to concentrate our business relationship on important matters that will add value to the client.”

A key issue, though, is whether the INPI will be ready by October. One person sceptical of the registry’s readiness is Walter W Palmer of Pinheiro Palmer Advogados, who tells us he is “not as confident as I would prefer to be” over whether he believes the INPI will be ready to implement the requirements of the Madrid Protocol. “The INPI’s website, including its electronic filing platform, continues to have stability problems and goes offline for extended periods,” he explained. “Furthermore, while the INPI is presently examining trademark applications within nine months of filing, it is not clear it will be able to maintain this pace once it starts to receive international designations.” Pinho added further challenges, including “harmonising the classification system” and “hiring translators or translation services to translate WIPO publications relating to international applications for Brazil (from English into Portuguese).”

Another concern is over legislative readiness. The INPI recently released its draft guidelines in relation to multiclass applications, co-ownership and other rules related to Madrid Protocol-related applications. The public consultation on these draft guidelines began this week, with interested parties having until 27 June to give their feedback and suggestions. “The INPI will have to consolidate all suggestions and come up with final guidelines within a short timeframe,” says Oliveira, with Pinho adding that the office “has a lot on its plate and very short time to accomplish all these goals”.

While some are sceptical that the registry will meet this challenge, others are optimistic. Hallak said that “considering the efforts made by the Brazilian PTO to implement the requirements of the Madrid Protocol so far, we are convinced that the BRPTO will be able to fulfil the other necessary requirements”. On the other hand, Machado said that these challenges are not being faced alone: “I believe they are not totally prepared but also believe they never would be. Therefore, under this assumption, it is better if we join the Protocol and learn how to be prepared during the process. I can say that WIPO is helping a lot, both with training and software, so the chances of success are good.”

The message is clear: the Madrid Protocol is coming soon to Brazil. Every practitioner we spoke to confirmed they are making preparations for it – from informing clients to arranging training – and they are all confident it will be a positive for international brand owners. On top of that, the hope is its implementation will lead to other changes, with Machado concluding: “I really believe that our IP law requires some minor adjustments – and not necessarily because of the protocol, but rather to modernise the entire registration process in Brazil. In other words, I believe that the accession to the Madrid Protocol can be used as an excuse to re-examine the law and evolve our requirements to modern practice.”

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