The Challenges of the Madrid Protocol
The Madrid Protocol is knocking on Brazil’s door. After an almost two decade wait, President Jair Bolsonaro’s ratification of the treaty occurred in July 2019. Several measures have been implemented by the Brazilian Patent and Trademark Office (BPTO) to meet the treaty’s standards. One of the main necessary adjustments was reducing the length of the examination timeline. This procedure previously took around three years and now only requires 10 months, an even shorter period than the 18 months required by the Protocol. Despite the debates among Brazilian IP professionals regarding the eventual need to alter Brazilian legislation to avoid certain conflicts with some of the Protocol’s requirements, its adoption is viewed as a positive factor in expanding Brazil’s presence in international trade.
Needless to say a swifter analysis will make the BPTO more vulnerable to mistakes. As such, the number of lawsuits challenging administrative decisions, such as nullity actions against the validity or rejection of a trademark register, are expected to grow. Nullity actions require the participation of the BPTO in the dispute and shall be filed before Federal Courts during a period of 5 years counted from the publication of the BPTO’s decision that granted or rejected the trademark. An injunction for the immediate suspension of the effects derived from the granting of a trademark can be sought and a Lower Court’s Judge will take around 1 to 1.5 years to rule on the merits of the matter.
The prospective increase of trademark applications due to an internationally simplified registration system in Brazil should lead to more trademark registrations. Therefore more conflicts should arise between competitors based on infringement. Infringement and non-infringement disputes should be brought before Civil Courts.
Preliminary injunctions are strongly recommended in infringement and non-infringement lawsuits. In Brazil, there are two types of injunctions: urgent relief (usually ex parte) and evidence-based relief. Strong evidence on the infringement is required and in case of urgent relief it is crucial to demonstrate the concrete fear of irreparable or hardly reparable injury.
The burden of proof in trademark litigation is borne by the Plaintiff and some judges, depending on the case, deem expert examinations necessary. If so, the duration of the lawsuit will be extended and the related costs increased.
Brazilian LPI provides specific criteria for damages calculation, as sets forth in in its articles 209 and 210.
The timeline for a Lower Court Proceeding is usually around 1 to 1.5 years and before the Court of Appeals it takes approximately 2 years. Appeals filed to the Superior Courts (STF and STJ) take about 3 years to be judged.
With regards to litigation, one of the main impacts of adhesion to the Madrid Protocol lies in the possibility of having a trademark application filed by a foreign company or person without an attorney in Brazil. Presently, according to article 217 of Brazilian Industrial Property Law (LPI), the person domiciled abroad must appoint and retain an attorney duly qualified and domiciled in this country with powers to represent that person in administrative and judicial proceedings, including receipt of summons. This provision has guaranteed that, in case of a lawsuit, a locally domiciled attorney would be served of summons in Brazil, instead of the trademark titleholder domiciled abroad. This legal solution aims to simplify and expedite proceedings, aside from avoiding the bureaucracy of serving summons to a foreign country through a letters rogatory. Promises have been made by the BPTO stating that WIPO could collaborate on this matter serving summons to foreigners through a notification in its Official Gazette.
Most likely this proceeding would be vulnerable to nullity in view of Brazilian current Civil Procedure rules.
The exemption of the obligation set forth in article 217 of LPI will not prevail in case the trademark is challenged during the administrative procedure before the BPTO, given the fact that for filing answers to oppositions or appeals an attorney in Brazil must be appointed. Therefore the burden of serving summons abroad will be mitigated in such cases.
Notwithstanding the challenges foreseen in litigation and potential legislative adjustments, the adoption of the Madrid Protocol is certainly a fundamental step towards the development of Brazil’s role in the globalized economy.
ABOUT THE AUTHORS
João Cunha and Laetitia d’Hanens are both senior partners with over 20 years practicing IP law. While João is the head of the litigation team providing strategy and risk assessment in all IP conflicts, Laetitia is head of the Consultancy and Contracts department, rendering IP advice and transactional services, including the negotiation and closing of IP partnerships. Amanda De Siervi is a partner with 16 years of professional experience specialized in IP litigation.
Amanda Fonseca De Siervi
E-mail: firstname.lastname@example.org Phone: +55 11 2149-4687
Laetitia Maria d'Hanens
E-mail: email@example.com Phone: +55 11 2149-4504
João Vieira da Cunha
E-mail: firstname.lastname@example.org Phone: +55 11 2149-4514