Brazil's adhesion to the Madrid Protocol for International Registration of Trademarks

Posted on: 12/9/2019

Brazil's adhesion to the Madrid Protocol

The "Protocol relating to the Madrid Agreement concerning the International Registration of Marks", better known as the Madrid Protocol, is an international treaty that allows the registration of marks in more than 120 countries through an international application.

The Madrid Protocol will go into effect in Brazil on October 02, 2019, bringing along new and important practices in the Trademark area, not only to the Brazilian PTO (“INPI”), but also to the trademark community.

On September 09, 2019, the Brazilian PTO published Resolution No. 247/2019, which rules the registration of trademarks under the Madrid Protocol (this Resolution will go into effect on October 02, 2019).

As a result of Brazil’s adhesion to the Madrid Protocol, it was also necessary to introduce new practices in the trademark area, as mentioned in the paragraphs that follow.

Brief comments about the registration of marks via the Madrid Protocol

Brazilian PTO acting as an Office of Origin (international applications originated from Brazil)

Brazilian legal entities or citizens (or foreign individuals/companies domiciled in Brazil) that wish to protect their marks overseas, via the Madrid Protocol, must have filed an application at the Brazilian PTO (“base application”) or must own a registration granted by the Brazilian PTO (“base registration”).  Based on the Brazilian application or registration (“base application” or “base registration”), the Applicant must indicate to the Brazilian PTO, the jurisdictions of interest (“designated contracting parties”), that is, those in which it wishes to obtain trademark protection.

Subsequently, the Brazilian PTO will forward the international application to the World Intellectual Property Organization (WIPO) and will indicate the jurisdictions of interest  (“designated contracting parties”) for the Applicant. WIPO will then notify the Trademark Offices of the designated contracting parties.

The examination of the international application in each designated contracting party (jurisdiction designated by the Applicant) will be conducted in accordance with the local legislation of each jurisdiction.  In case any objection is raised during the prosecution of the international application in one or more designated contracting parties, the Applicant will have to hire the services of specialized firms in those designated contracting parties where an objection was raised.

Although the Madrid Protocol aims at a reduction of costs, it should be noted that besides taxes to be paid to WIPO, there are also taxes to be paid to the Trademark Office of each designated contracting party.

Assuming that the mark obtains protection in the designated contracting parties, the Brazilian owner will hold a single international registration, valid in all jurisdictions of interest (designated contracting parties).

Brazilian PTO acting as a Designated Office (international registrations designating Brazil)

Once WIPO notifies the Brazilian PTO of an international registration designating Brazil, the international registration will produce the same effects of an application filed directly at the Brazilian PTO.  Likewise, protection granted by the Brazilian PTO to a trademark registration granted via the Madrid Protocol will be identical to the protection granted to a trademark  registration obtained directly at the Brazilian PTO (without using the Madrid Protocol).

As for the examination of marks object of designations in Brazil, it will be conducted in accordance with the Brazilian Industrial Property Law (Law No. 9279/96). It should be noted that in order to act before the Brazilian PTO, the owner of an international registration domiciled outside Brazil must appoint an attorney who is qualified and domiciled in Brazil (a Power of Attorney must be submitted at the Brazilian PTO).

It is worth noting that no changes were made with regard to non-use cancellation requests provided by the Brazilian IP Law, which means that trademark registrations granted by the Brazilian PTO via the Madrid Protocol will also become vulnerable to cancellation on the grounds of non-use after 5 years.  Ideally, owners of an international registration designating Brazil should begin using the mark in the Brazilian territory as soon as protection is granted in Brazil.

New Proceedings

Because of the Madrid Protocol, new other practices were introduced in the trademark area, namely:

  • the multiclass system (provided by Resolution/INPI/PR No.248/2019, which will go into effect on October 02, 2019);
  • the co-ownership of trademarks (provided by Resolution/INPI/PR No. 245/2019, which will go into effect on October 02, 2019); and
  • the division of registrations and applications (provided by Resolution/INPI/PR No. 244/2019, which will go into effect on March 09, 2020).

As for the multiclass system and the co-ownership of trademarks, although the respective Resolutions Nos. 248/2019 and 245/2019 will go into effect on October 02, 2019, both Resolutions state that the petitions relating to the multiclass system and co-ownership of trademarks will only become available at the e-INPI System as of March 09, 2020.  Consequently, until those petitions become available, trademark applications can only be filed in a single class and in the name of a single Applicant.

Furthermore, it is to be  noted that there is no limitation of the number of classes to be claimed in a trademark application. However, it is worth mentioning that the Applicant must declare that it develops, either directly or indirectly, in Brazil, the activities that are identified by the mark, as per Article 128, paragraph 1, of the Brazilian IPL.  This declaration must be done regardless of the application being filed directly at the Brazilian PTO as a national application, or via the Madrid Protocol.

With regard to the co-ownership of trademarks, Resolution No. 245/2019 states that upon the examination of a trademark, the Brazilian PTO will consider as a third-party right, the prior right owned by a set of owners   which is not identical to the set of applicants of the application under examination.

Therefore, it is necessary to bear in mind that if the owner of a trademark registration files, together with another applicant (or applicants), a new application for an identical or similar mark, to identify identical or related goods/services, the new trademark application may be rejected in view of the existence of the prior registration, as the owners are not the same.

Other important issues regarding the co-ownership of trademarks are (i) the fact that oppositions, administrative nullity proceedings and non-use cancellation requests can be filed by only one co-owner of the registration/application that will serve as basis for the allegations; and (ii) a registration will not be declared cancelled on the grounds of non-use whenever at least one of the co-owners submits evidence of the use of the mark (however, in case of non-use of the mark, the corresponding justifications must be presented by all co-owners).

Finally, as for the divisions of trademark registrations and applications, Resolution No. 244/2019 states that the filing date and the priority date of the original application will be maintained in the registration or application resulting from the division. Likewise, the validation period of the original registration shall be maintained in the registration resulting from a division.

Also, it will be possible to request the division of a trademark application or registration for the purpose of transfer of ownership, as well as to assign part of the goods of services belonging to the same class.

3rd Edition of the Brazilian PTO’s Trademark Manual

The Trademark Manual of the Brazilian PTO was first launched in 2014 and represents, since then, the consolidation and improvement of the rules and guidelines stipulated over the years by normative opinions, resolutions, normative instructions, technical notes, decisions of the Standing Committee for the Improvement of Procedures. and Examination Guidelines of Trademark Examination (CPAPD) and by tacit procedures used in the examination of trademarks.

On September 10, 2019, the Brazilian PTO published the 3rd Edition of the Manual, updating the examination guidelines and incorporating the new procedures mentioned in the preceding paragraphs, namely:

- the co-ownership of trademarks;

- the registration of trademarks in a multiclass system;

- the division of trademark registrations or applications; and

- the registration of trademarks under the Madrid Protocol.

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