What we have learned about the Madrid Protocol in Brazil
In a recent article, we discussed how the Brazilian government began to focus its attention on creating a culture of innovation, and the growth of Intellectual Property and technology in the country over the past years. In line with this trend, and in spite of the global pandemic, the BPTO has been taking significant steps to modernize and align itself with leading international IP institutions. One key project for the BPTO was the implementation of the Madrid Protocol in October 2019. In this post, we will briefly assess the developments leading up to the Protocol’s implementation and consider what we have learned about the Brazilian context more than a year after.
The Madrid Protocol in Brazil
The Madrid Protocol was first created in 1989 and started to be applied in 1996. Through the system, trademark applications are initiated at national or regional offices, where they are deposited, thereafter 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 one to decide whether to register the trademark within that territory.
Since the end of the 1990s, the Madrid Protocol also became a “hot topic” in Brazil. In 2019, the country took the final steps necessary to ratify the treaty, which became operational in Brazil on October 2, 2019 (under Decree No. 10,033).
While it seems that there was a delay in ratifying the protocol, it should be noted that Brazil has been analysing its potential entry into the system since 1999. Despite the clear benefits of its implementation, the country was facing the challenge of adopting its (relatively) new industrial property law (enacted in 1996) to other international standards and requirements.
Thus, throughout this period, Brazil invested and strengthened its intellectual property system, in preparation for these more recent steps and initiatives. Therefore, it is important to understand the Madrid Protocol as part of a broader strategy for the country’s development and that such change could not be affected without prior qualification of the existing IP infrastructure.
In the Brazilian context, these changes also required the building of a collective understanding among the other IP institutions and the consolidation of a robust system in Brazil, which would allow for the improvement and expansion of IP and its broad exposure to the international market through the Madrid Protocol.
Results – A Quick Glance
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 deposit in each country of their choice, bearing their respective costs and opening proceedings in each national IP office. Furthermore, in general, the Protocol appears to be working well from a Brazilian perspective.
What have we learned?
The Madrid Protocol has simplified proceedings, making it relatively easy to extend international registration to Brazil (at least in straightforward cases).
Based on the above numbers, and as the Nice classification (the international classification of goods and services for the purposes of registering trademarks) 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. This means, at least in present times, that local counsel in Brazil only strictly necessary where the trademark suffers a provisional refusal in the BPTO.
On the other hand, it should be noted that there are still several limitations under the current process:
- Despite having simplified the proceedings, international registrations affected under the Protocol with Brazilian designation before the date of its implementation on October 2, 2019 will not be accepted (in other words, the Protocol does not have retrospective effect and this position is unlikely to change in future);
- Division or merger of an international registration has no effect in Brazil and currently multiclass filings remain unavailable. 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 the formalities and on absolute grounds. This position may change as multiclass filings could be accepted by the office soon;
The registrant 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. This requirement has the objective of preventing piracy and trademark “trolling” practices.Finally, it is also worth noting that Brazilian IP law requires that the registrant appoint a local representative to service their registrations. This requirement was created to enable any party to challenge a trademark in Brazil in a cost-effective way, otherwise the titleholder would have to be served internationally, increasing litigation costs where no judicial cooperation treaty is in place between Brazil and the country of the applicant/registrant.
The BPTO has taken a much-needed step in its implementation of the Madrid Protocol at national level. The accession to the Protocol was important for Brazil’s plans to foster international business and brings with it numerous advantages, including the simplification of registering trademarks abroad, speeding up the process and registration time, and the possibility of unifying all the applications in one place.
At the same time, it is worth keeping in mind that the current system for implementing the Madrid Protocol in Brazil is still in development (see the limitations discussed above).
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.
While there are signs that the outstanding issues will be resolved sooner rather than later, at this time we believe that acting preventively by working with a local partner during the prosecution phase, to monitor the relevant databases and to follow the developments in the BPTO is still advisable and could still save time and cost.
We are continuing to monitor all developments and will keep you informed of all the latest news in this area.
At Daniel, we have developed a proprietary technology to manage and monitor Brazilian designations with security and agility, which is a crucial asset to our clients while Brazil is new to the Madrid system and the BPTO adjusts to prosecuting international registrations. If you have any questions on this topic do not hesitate to contact us.