Madrid Protocol Extends Trademark Possibilities, but Requires Caution

Madrid Protocol Extends Trademark Possibilities, but Requires Caution

Brazil recently acceded to the Madrid Protocol, which aims to simplify and reduce costs for the protection of a brand. It entered into force on October 2, 2019. The National Institute of Industrial Property (INPI) is sending and receiving international requests in the scope of the Protocol.

However, it is important to note that international registrations filed before October 2 cannot be extended to Brazil. This will only be possible for applications filed after this date.

It is essential that the entrepreneur files an application for registration or already has a registered trademark at INPI. Without this, it will not be possible to apply for an international registration via the Madrid Protocol in Brazil.

An application for international registration, via the Madrid Protocol, with designation of Brazil, will be examined like other national applications. Importantly, INPI has adopted a single queue to examine domestic and foreign applications to ensure isonomic treatment. The process will follow all normal procedures and the laws of each country.

To use the Protocol, you need to strategically assess points that may require existing brand awareness and weaknesses.  Therefore, it is important to revisit the brand portfolio to see if they are up to date. It is also necessary to verify that the product and service classes are correctly protected and claimed.

In addition, it is necessary to assess whether the mark is being used effectively in Brazil and in the exact manner that it was registered with the INPI. Other requirements include: whether or not the trademark is susceptible to the forfeiture process which, if any, will affect all countries in which international protection has been sought; check if there has been any change in the logo and if the holder's data is up to date in the official INPI system.  Another very relevant factor is the choice of brand that will support international orders.

Adherence to the Madrid Protocol has led to some changes in the processing of trademark applications filed in Brazil only. Thus, as of March 2020, the depositor will be able to use the multiclass and co-ownership systems for filing trademark applications. There will be no more limit to classes claimed in a trademark registration application. The quota system may be used by nationals and those made via the Madrid Protocol.

For an application for trademark registration via the Madrid Protocol in a member country, the INPI must make a decision within 18 months. Today the deadline for the first decision of the INPI is less than 10 months.

Attention must be paid to official deadlines to comply with the arrangements, opposition, demonstrations, replies, etc. Failure to meet certain deadlines may in certain cases lead to the final filing of the registration application and damages to the depositor.

Applications for registration, with designation from Brazil, will only be published in the INPI Industrial Property Magazine, opening a period of 60 days for third parties to object. The same 60-day period will also be open for the depositor's statement. It is not possible to oppose an application for international registration directly with the World Intellectual Property Organization (WIPO). Therefore, having a lawyer already constituted and following the process here in Brazil, from the beginning, is essential.

It is also important to emphasize that, for the practice of acts in Brazil, performed directly at the INPI, the holder must, necessarily, constitute and maintain a qualified attorney domiciled in the country.

The international registration does not automatically cover all signatory countries of the Madrid Protocol (105 members covering 121 territories). It is necessary to indicate at the time of application which countries the depositor wishes to obtain protection for and pay the respective fees for each country. The entrepreneur needs to seriously evaluate the company's business plan to implement this choice. New countries can be added at any time with later designations.

Also, when using the Madrid Protocol for filing overseas trademarks, protection will not be automatic. Each country will review applications following local law.

It is interesting that the entrepreneur protects the brand in the countries where he will act with it. This prevents third parties in bad faith seeking an advantage from using or registering an identical or similar trademark before it, thereby preventing the right holder from exercising rights over it - which will certainly lead to lengthy conflicts, including legal disputes, and high costs.

The Protocol, while comprising countries that account for more than 80 percent of global trade, such as China, the United States, the European Union, and Japan, makes little sense for expansion in Latin America. That's because only three members joined - Cuba, Colombia and Mexico. On the other hand, if the focus is outside Latin America - the Madrid Protocol can be an interesting tool. It will all depend on international expansion plans.

In summary, there are advantages and disadvantages regarding the adoption of the Madrid Protocol for the registration of trademarks abroad, which should be considered on a case by case basis. It is essential to conduct a strategic study by a specialized professional to define risks and the most advantageous format.

 * Flávia Amaral and Renata Soraia Luiz are partners of Chiarottino e Nicoletti Advogados

Published on January 17 2020 .

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