The Madrid Protocol in Brazil – A significant change in the IP scenario

By Ana Lúcia de Sousa Borda, Rafaela Carneiro, Alvaro Loureiro and Rafael Atab, partners at Dannemann Siemsen

For Brazilian IP professionals, October 2nd, is definitely not a day like any other one. This also applies to National applicants and foreign companies seeking trademark protection in Brazil. This day sets an important landmark, as it is the date the Madrid Protocol enters into force in our country.

One of the most significant changes introduced with the Madrid Protocol is the multiclass system, now available not only for national and foreign applicants using the Madrid System, but also for those seeking protection at the National level.

For local businesses, this means the possibility of filing a single trademark application in all classes of goods and services of interest at the BPTO and at the same time designating member countries of the Madrid Protocol.

As far as foreign applicants are concerned, there is the possibility of seeking protection in Brazil in as many classes as possible through a single filing regardless of the use of the Madrid System.

In sum, Brazil finally became a multiclass country; however, the BPTO will charge separate fees for each class and examination will be performed per class as well.

Further noteworthy changes are the co-ownership regime and the possibility of division of applications and registrations.
The Madrid System introduces some significant changes of a bureaucratic nature for both National and foreign applicants.
Under the Madrid System, applications filed on behalf of Nationals and to be forwarded to the International Bureau will have to be submitted either in Spanish or in English, which are the languages Brazil has undertaken to use in connection with the Protocol.

Brazil has committed to proceed with examination within 18 months. As a matter of fact, the BPTO is currently rendering decisions on applications without oppositions in seven months, while those under opposition proceedings in nine months.
It should be noted that the Madrid System will not affect examination as it will continue to be performed based on Brazilian IP Law, which sets forth that the BPTO has to proceed with the examination on relative grounds of refusal as well.

Local applicants may designate further countries, making use of the first (basis) application, as long as the scope of protection is not enhanced. The possibility of a territorial extension by means of additional designations sounds like music to those businesses envisaging at a later stage the access to further markets and jurisdictions. Moreover, further designations may encompass a different (reduced) number of classes, according to the applicant’s convenience.

Foreign applicants may request the substitution of their applications filed under the Madrid System by a registration already granted by the BPTO prior to the designation of Brazil, if the mark is identical and the products or services listed in the national registration are encompassed by the basis application. Once the substitution is allowed by the BTO, it will inform the International Bureau.

Should the International Registration with designation to Brazil be cancelled, it will be possible to request its conversion into a National application or registration within three months, but only if the marks and their products or services are identical to the ones that were cancelled. One of the advantages is that the original designation date will be maintained.

It is of utmost importance that foreign applicants bear in mind the need to appoint a local agent to proceed on its behalf before the BPTO in the event that action has to be taken. The subsequent filing of the PoA is possible within 60 days as of the date of the filing of the motion or petition.

The above mentioned rule is in line with further provisions of the Brazilian IP Law, namely Articles 142 and 217, which respectively state that a trademark registration shall lapse should its holder fail to comply with the provisions of article 217, which, in turn, sets forth that a person domiciled abroad shall appoint and maintain an attorney domiciled in Brazil with powers of representation both administratively and judicially and to receive summons.

A new age of trademark protection is coming to Brazil and; therefore, the interest to learn more about the implementation of the Madrid Protocol. Our law firm will be glad to be of assistance should further clarification be required.