by Ana Lúcia de Sousa Borda, Rafaela Borges Walter Carneiro, Alvaro Loureiro Oliveira, Rafael Atab
January 10, 2019
Continuing the ongoing preparations for the adoption of the Madrid Protocol, the Brazilian Patent and Trademark Office (BPTO) published the last two Resolutions on Tuesday, September 10th, which will come into force on October 2nd.
The first of them, Resolution 247/2019, sets out trademark registration under the Madrid Protocol. Resolution 248/2019, in turn, deals with trademark registration in a multi-class system.
Resolution 247 will apply both to trademark applications designated for Brazil, that is, applications filed by foreigners with the World Intellectual Property Organisation (WIPO), as well as applications filed by nationals or by those entitled to file trademarks in Brazil with the BPTO.
Such Resolutions have in common the fact that they also apply to domestic applications, that is, applications for registration filed by nationals or by foreigners at the BPTO without the interference of the WIPO.
Resolution 247/2019 – Trademark Registration under the Madrid Protocol
This Resolution has four chapters: the first lists the definitions of the terms to be used for applications filed under the Madrid System. The remaining chapters are the most relevant for the understanding of this system.
Chapter II establishes the procedures related to “International Applications Originating in Brazil”. For these, the applicable languages are Spanish or English. If a country is designated that requires submission of a declaration of intent to use the trademark, such declaration shall be written in the language of the country concerned.
Certification consists of a formal examination carried out by the BPTO, at which time the information supplied by the filer is compared with that contained in the application or registration that will serve as the basis for the international registration.
If no inconsistencies are identified, the application will be sent to the International Bureau (International Bureau of the World Intellectual Property Organisation) and the international registration date will be the filing date with the BPTO, which translates into an advantage for the applicant, since this will be considered the registration date of the trademark at WIPO. In any event, the BPTO shall observe a 60-day term for submitting the application to the International Bureau, so that the international registration date coincides with the filing date of the application with said body.
However, in the event of inconsistencies, these will need to be remedied by the applicant in a term of 60 days, which makes it less feasible that the benefit mentioned above will be achieved. Therefore, the accuracy of the application (in Spanish or English) will be decisive for the submission to the International Bureau to take place in a way that favours the applicant.
The possibility of subsequent designations being requested is another of the system’s attractions. Nothing precludes the applicant from initially seeking protection in, for example, three countries and then applying for territorial extension to other jurisdictions without any limitation, provided that the scope of protection of the trademark is not changed.
Each designated country will examine the application in accordance with its own legislation, as the Madrid Protocol is only an international registration system, created to facilitate the management of trademark portfolios.
The weakness of the system lies in the fact that in the event of the removal or rejection of the basis application or cancellation or revocation of the basis registration in a term of five years, the international registration will be cancelled. In any case, the applicant or titleholder may seek protection in the countries of interest through national registrations.
Chapter III lists the rules applicable to “International Registrations Designating Brazil”.
In these cases, the language used must be Portuguese not only for completing the filing form, but all and any document submitted to the BPTO must be written in Portuguese. However, submitting a simple translation of documents will suffice.
To carry out acts directly at the BPTO, the titleholder must mandatorily retain and maintain an attorney that is qualified and domiciled in Brazil. This rule is made more flexible by the possibility of subsequent presentation of the power of attorney within 60 days, a term that will run regardless of notification or office action.
Once received by the BPTO, an application with designation for Brazil will be examined based on Law no. 9,279/1996 (IPL). Thereby, the same rules that apply to domestic applications will apply to applications from the International Bureau. One of these will be the examination of the application based also on relative grounds of refusal that is, previous third-party rights may be indicated as obstacles to registration. On this issue, Brazilian law differs from many legislations that examine the registrability of a trademark solely based on absolute prohibitions, such as, for example, descriptive, generic terms, etc.
At the end of 18 months, the BPTO will send the International Bureau (i) a notification of provisional or total refusal of the application or (ii) a declaration of the granting of protection.
In the event that the BPTO does not send notification of refusal to the International Bureau within a term of 18 months, protection will be granted. Therefore, at least in theory, there is a possibility of protection being granted on expiry of the term.
Replacement and transformation are equally interesting mechanisms. In the case of replacement, the titleholder may request the annotation of the national registration being replaced by the international registration, provided that all products and services listed on the national registration are contained in the designation for Brazil and that the national registration is in force and prior to the designation for Brazil.
The transformation hypothesis takes place when the basis registration is cancelled or the application is removed at the request of the Originating Administration. In this case, the titleholder may request that the BPTO, in a term of three (3) months, transforms the designation into an domestic application or registration of the same trademark.
Resolution 248/2019 – Multi-class Trademark Registration
This can be considered one of the most significant changes introduced as a result of the accession to the Madrid Protocol. Although Brazil could have opted for the multi-class system regardless of such membership, the fact is that it has only taken place now.
Since the BPTO, as has already been mentioned, carries out the examination of registrability based on relative grounds of refusal, examination itself will not change even with the introduction of the multi-class system. In short, there will be an examination by class, as if they were distinct applications and as a result, the following scenarios are possible:
Allowance, with the opening of a term to pay the registration fees;
Rejection, when refusal takes place in all classes and
Partial allowance, if obstacles to registration are disclosed in part of the classes claimed, which will result in the abeyance of the application as a whole.
Even though it comes into force from October 2nd, petitioning with respect to trademark registration in a multiclass system will only be made available on the BPTO’s electronic System from March 9 th, 2020.
Now that all the Resolutions related to the Madrid Protocol have been published, co-ownership and multi-class system petitioning will remain pending until March 8th, 2020.