by Ana Lúcia de Sousa Borda e Rafael Atab
October 20, 2020
The Madrid Protocol has been in force in our country for a year, which invites us to look back and have a quick overview on what has happened so far. We should of course start by recalling what the most immediate expectations for both domestic and foreign users were about accession to the Protocol. Although each user may have their individual expectations, some were common to most of us.
From the perspective of the domestic business community, an unprecedented opportunity would open up. One would be able to apply for protection through a single International Registration to the International Bureau of the World Intellectual Property Organization (WIPO) for Brazilian trademarks, potentially designating all member countries of the Protocol and covering 45 classes of goods and services. Madrid Protocol currently has 107 members, covering a total of 123 countries, which shows the size of the window of opportunities that has emerged for Brazilian companies in terms of facilitating access to protection for their distinctive signs worldwide.
Another great expectation for the Protocol is speed, since member countries must undertake to proceed to the examination of applications via the Protocol in 12 or 18 months from the date the National IP Office is notified of the relevant designation. In the case of Brazil, the option was taken to complete the examination in 18 months, which in fact best fits our reality. Unlike the legislation in many countries, the BPTO conducts full review on registrability ex officio, both on absolute and relative grounds, even if in the absence of oppositions to a trademark application.
In the months preceding Brazil’s accession to the Protocol, one has watched many opinions, both in the general press and in specialized circles, advocating that there seemed to be strong repressed demand from Brazilian businesses, which were extremely interested in benefiting from this new system. And this was not only due to the centralised management of the trademark portfolio through the International Bureau – the main characteristic of the Protocol -, but also based on the widely advertised considerable reduction in the costs resulting from it, in comparison with the expense of hiring professionals specialized in Intellectual Property in each of the countries of interest.
Another advantage of the Protocol is the possibility of using the multiclass system. This allows the user of the system to claim all classes of interest through a single International Registration. In the case of Brazil, however, the examination will take place by class and upon payment of the full fee for each claimed class.
However, reality shows that the apparent repressed demand and supposed strong desire of Brazilian businesses have not been confirmed in numbers. In the past 12 months, national users have filed 109 applications for International Registration at the BPTO, some of which have not proceeded to WIPO. On the other hand, the number of applications (designations) received by the BPTO from foreign countries far exceeds the modest number of applications from Brazilians. Just to have an idea, the WIPO website indicated 8.290 Brazilian designations.
Foreigners’ expectations were more related to the predictability that examination would be completed within the 18-month time limit, and also the possibility of using the multiclass system to protect their trademarks in Brazil, even when filing their TM applications directly with the BPTO. However, the multiclass system is not yet available for applications outside Madrid System, whether they are requested by nationals or foreigners, and it is necessary to seek protection by filing individual applications for each class separately. When this article was published there had been no announcement about the expected implementation of the multiclass system.
In addition to the multiclass system, the adoption of the Protocol enabled the co-ownership regime and the possibility of dividing applications and registrations. However, implementation of the co-ownership regime was only adopted on 15 September of this year, while the division of applications and registrations was postponed until 1 July 2021.
The much talked about speed in examining the Madrid cases has not yet been confirmed. Recently, the first oppositions presented against some designations have been published and some designations were allowed into registration in the IP Journal of October 13th. As for the other cases that were not opposed, one would certainly expect a speedier decision. Indeed, for the first designations received last year, a period of less than six months now remains for a decision to be rendered. In the absence of a procedural incident – such as an office action or rejection – within the 18 months, the designation will automatically be converted into a national registration when the term expires, which has the potential to cause disputes.
The little appetite that Brazilians have shown in seeking Madrid Protocol route may reflect in part the current economic crisis, or even the high value of the exchange rate. Since registration costs are quoted in Swiss francs, WIPO fees tend to alarm companies that are just starting to go international.
In any event, domestic businesses may now rely on a modern system for seeking protection for their trademarks in various countries, as an additional alternative for their global strategies, but it will only be actually valuable if the BPTO adopts measures to improve its efficiency and guarantee isonomy among nationals and foreigners.