Innovation & Marketing

Brazil's Best Counsel 2020 - Chapter Opening: Trademark Prosecution

Partners Rafael Atab and Elisabeth Siemsen do Amaral co-authored the chapter opening for Trademark Prosecution

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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: esiemsen@dannemann.com.br  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: atab@dannemann.com.br  Phone: +55 21 2237-8929

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