Trademarks in Brazil
Trademark prosecution in Brazil is taking a huge turn as the country finally re-enters the Madrid System. After several years of political discussions on the subject, Brazilian congress finally approved, in May 2019, Brazil’s accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”).
Brazil is certainly a very different country than the one which decided to leave the Madrid System back in the 1930s. With a population of over 200 million and a Gross Domestic Product (GDP) of more than two trillion US dollars, Brazil is one of the most dynamic economies in the region, attracting attention from leading companies around the globe. It is also the largest consumer market in Latin America.
Therefore, it is no surprise that Brazil’s accession to the Madrid Protocol was generally supported by local industry, which regards the System as an important tool for the optimized management of companies’ trademark portfolios around the world. Foreign companies will also benefit from this new opportunity to secure trademark rights in Brazil, even though current improvements by the Brazilian Patent and Trademark Office (BPTO) have already provided local and foreign companies with a more reliable and expeditious trademark prosecution environment.
Indeed, as it paved its way to entering the Madrid System, the BPTO has undertaken a number of administrative changes which has allowed it to drastically reduce its backlog in trademark prosecution and deliver a better service to applicants and registrants. In addition to investing over $10 million, mostly in IT infrastructure, the BPTO has recruited and trained over 200 new examiners.
In addition, a few changes to Brazilian trademark prosecution are taking place. Indeed, the BPTO is changing its regulations, which will now contemplate multi-class trademark filings, along with the possibility of dividing trademark applications in certain instances. Furthermore, co-ownership of trademark registrations will now be possible, which should constitute a new and important strategic option for several different businesses, from large joint ventures to small music bands.
Reflecting a dynamic and recovering economy, there was a significant increase in the number of trademark filings in 2018, with over 200 thousand new marks being applied for before the BPTO. In the same period, almost 380 thousand decisions were rendered, which reduced the average timeframe for a trademark application to less than 10 months.
While 86% of the trademarks filed in 2018 were held by local companies, the number of applications by foreign companies is expected to increase substantially both with the accession to the Protocol and with the further improvement of the local economy.
Under such a scenario, it is paramount to bear in mind that Brazil is traditionally a first-to-file country and proprietorship over a trademark originates from a granted registration. Therefore, seeking a trademark registration as soon as possible is of utmost importance for enforcing TM rights and to guarantee legal protection in the country.
Notwithstanding such recent improvements, both companies and private practitioners alike hope that the BPTO’s investments and efforts to achieve global standards of productivity will continue, allowing companies to secure their intellectual property rights in Brazil. This will certainly help to build solid foundations for the increase of local and foreign investments and for the strengthening of the business environment in the country, which becomes vital in a moment in which the Brazilian economy retakes its path to a sustainable growth.
ABOUT THE AUTHORS
Elisabeth Siemsen do Amaral: Elisabeth Siemsen is a partner at Dannemann Siemsen specializing in strategic trademarks proceedings and administrative litigation. Vice-president of the Inter-American Intellectual Property Association, she is also member of the Board of Directors of the Brazilian Intellectual Property Association (ABPI).
E-mail: email@example.com Phone: +55 21 2237-8921
Rafael Atab: Rafael Atab is a partner at Dannemann Siemsen. He is Coordinator of the Trademark Committee of the Brazilian IP Association, Chair of the Standing Committee on ADR of the International Association for the Protection of IP (AIPPI) and a Professor of Intellectual Property at Pontifícia Universidade Católica do Rio de Janeiro (PUC-Rio).
E-mail: firstname.lastname@example.org Phone: +55 21 2237-8929