Brazil ratified the Madrid Protocol, which became operational in the country on October 2, 2019 (under Decree No. 10,033).
In this post, we consider the requirement to appoint a local representative in respect of Brazilian Madrid Protocol designations, and the preventive steps that can now be taken by foreign applicants to mitigate future costs.
Some quick background
The Madrid Protocol is part of the Madrid System for Registration of Marks (The Madrid System) that is 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.
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.
Why use the Madrid Protocol 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, 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 the applicant 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 representative 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.
What about in less straightforward 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.
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 application in Brazil may not be properly advised of setbacks and potential alternatives to overcome a provisional refusal.
A look at the numbers
In the period between October 2019 to August 2022, there were approximately 26,100 Madrid Protocol cases received at the BPTO. Of this total, 20,500 do not have a local representative assigned.
Of such cases (without a local representative), 11,500 (58%) are still awaiting a decision.
Still in this group, 8,500 have already received a response from the BPTO, of which 82% were granted and 18% were rejected.
Furthermore, of the 20,500 cases without a local representative, 927 were opposed, of which 216 had their marks rejected by the BPTO. Finally, 61 cases were subject to nullity proceedings.
This data is illustrative, as it attests the vulnerability of Brazilian designations that are not being monitored by local representatives.
It is understandable that applicants designating many countries at once would be reluctant to spend more costs in appointing local representatives in Brazil (especially since this defeats the purpose of the Protocol).
Nevertheless, acting preventively and taking the simple step of appointing a local representative to monitor all your international registrations in Brazil may be a fast and cost-effective solution to ensuring protection for your marks.
What first steps can you take now?
Considerable focus has been on the current limitations of the system in Brazil, for example the requirement to appoint a Brazilian representative in cases involving opposition proceedings.
Unfortunately, it appears that this emphasis has often led to the abandonment of Brazilian applications at the first obstacle. However, it should also be pointed out that the Protocol is working well from a Brazilian perspective (click here to access some of the latest numbers on the Madrid Protocol in Brazil).
In particular, foreign applicants should note that opposition proceedings are quite straightforward in Brazil. After the deadline for filing the response has expired, the case will enter in the examination queue and the BPTO will render a final decision on the matter.
This means that, the costs and efforts involved in appointing a representative will likely remain low for the entire opposition procedure.
As a crucial first step, you should find a local partner with the tools and capacity to monitor all the developments of an international registration as it is prosecuted by the BPTO. Thereafter, you will be notified of any opposition proceedings and, if necessary, can seek further assistance during the trademark prosecution process.
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.
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.