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The Madrid Protocol will soon be enacted in Brazil

by Ana Lúcia de Sousa Borda, Rafaela Borges Walter Carneiro, Alvaro Loureiro Oliveira, Rafael Atab

August 29, 2019

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Brazil is currently facing a completely new scenario in trademark prosecution, as therecently elected Federal Government already signed Brazil’s accession to the Madrid Protocol on June 25. Following that, the accession document to the Madrid Protocol was sent to WIPO on July 2, 2019, so that it will be enter into force in Brazil within 90 days from said date, i.e., on October 2 nd, 2019.

The Federal Government has pledged to provide the Brazilian Patent and Trademark Office (INPI) with all necessary means for its implementation, but recent budget cuts in all governmental areas require close monitoring of this aspect.

According to officers for the INPI, the Protocol is already a reality and extensive preparation work has been done by the agency in order to apply Madrid properly, both for local and foreign users. Further, the INPI is well aware of the challenges to be overcome. The most critical issue, though, has been almost completely resolved, namely the backlog of trademark work that had been clogging the Office for many years.

The main changes that have been announced following the accession to the Madrid Protocol is that Brazil will become a multiclass country and that co-ownership will be allowed. In fact, our IP Law does not forbid co-ownership, but such was not recognized under the INPI’s current regulations. Once Madrid is enacted, this will be possible without the need of legislative changes.

Public consultations published by the INPI and answered by the most important IP associations, namely – ABPI, ABAPI, INTA, ASIPI, ASPI, and ECTA – dealt with the most important topics under the Madrid System, namely (i) Multiclass system, (ii) Co-ownership, (iii) Division of trademark registrations and applications in the multiclass system and (iv) Trademark Registration under the Madrid Protocol.

The final versions of the INPI’s resolutions on these four topics should be published in the IP Journal by late August, so that more information will then become available. In spite of that, the INPI has already stated that the multiclass system will apply to national and foreign applicants, even if the application is not filed under the Madrid System.

It is important to highlight that International Registrations granted prior to October 2 nd, 2019 under the Madrid Protocol will not be extendable to Brazil. Also, Brazil will require individual fees when designated and for every renewal.

In parallel, Brazilian Congress is also reviewing a legislative bill proposing some adjustments to our Trademark Law, to make sure that both local and foreign applicants will seek protection for their marks under the same conditions, thus enjoying equal treatment by the INPI. While the accession to the Madrid Protocol is a positive movement, the fact remains that there is the clear need to pave the way in order to assure that there will be no difference in the treatment of local and foreign applicants.

The main issues that are addressed by this legislative bill can be summarized as follows:

a) Similar to the recent change in the requirements for trademark prosecution before the USPTO, Brazilian Law also requires local counsels for foreign companies. A proposal to maintain the need for a local agent has been included in this Bill. This is a critical point, considering that decisions by the INPI are published on a weekly basis in the IP Journal in the Portuguese language. In addition, the INPI must, by virtue of our IP Law, proceed with examination on relative grounds of refusal as well;
b) The holder of a trademark registration will have to submit evidence of genuine use of its mark in Brazil as of the 6 th year of its grant, so as to avoid unnecessary cluttering of the Register with unused trademarks, thus preventing other businesses from securing protection for marks which will effectively be used; and
c) Revocation of a provision of our IP Law, which obliges the assignor to transfer in favor of the same assignee all marks which are identical or similar to cover identical or similar goods or services. According to this provision, the unassigned applications are automatically deemed abandoned and the unassigned registrations are cancelled.
Altogether, Brazil’s accession to the Madrid Protocol is important not only considering the globalization process, but also the fact that our country is ranked as the 8 th largest economy in the world.

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Ana Lúcia de Sousa Borda

Partner, Lawyer, Industrial Property Agent

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Rafaela Borges Walter Carneiro

Advogada, Agente da Propriedade Industrial

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Alvaro Loureiro Oliveira

Advogado, Agente da Propriedade Industrial

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Rafael Atab

Partner, Lawyer, Industrial Property Agent

Partner, Lawyer, Industrial Property Agent

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