Brazil has been part of the Madrid Protocol since October 2, 2019. Accession was important for Brazil’s plans to foster international business and has already brought numerous advantages.
Our clients often ask us when they should (or shouldn’t) file a trademark application directly before the BPTO. So, to get started, below is a quick summary on the pros and cons of filing trademark applications through the Madrid Protocol.
- Simplified proceedings making it easy to extend international registration to Brazil (besides managing renewals);
- Use of local counsel only required where provisional refusal (not necessary in straightforward cases);
- BPTO is likely to be less stringent due to its substantive experience with trademarks under the Nice Classification;
- BPTO will notify international Bureau of provisional refusals, decisions on nullity, or revocation actions.
- Brazilian designations only available for filings effected after October 2, 2019;
- National application may be faster and may include a broader claims for products and services;
- Division or merger of an international registration has no effect in Brazil and multiclass filings are not yet available;
- 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;
- Local representative requirement in order to service registrations and submit defences in a timely manner;
- BPTO will not notify international Bureau of certain local proceedings (e.g. filings of opposition).
Acting preventively may save costs in several ways, so having a local partner to assist you during the trademark prosecution and keep 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 and across Latam.
Daniel has 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.