Partner at IP boutique David do Nascimento Advogados, Mr. Nascimento shares his views on Brazil’s recent adhesion to the Madrid Protocol.
What’s the idea behind Brazil’s adhesion to the Madrid Protocol? What are the political and economic perspectives behind this decision?
In our opinion the current government wishes to “debureaucratize” our country. It strongly wishes to pass a message to national and foreign investors that Brazil is a good country for doing business and the old bureaucracy has changed. In this political-economic scenario the adhesion to the Madrid Protocol confirms this intention, since it can facilitate the registration of trademarks by national corporations wishing to export their goods and services as well as facilitate the registration of trademarks by foreign companies wishing to do business in our country.
It must be understood that the Madrid Protocol itself will not stimulate the volume of exports of Brazilian companies. This will depend on several other adjustments such as taxes, labor laws, incentives, government policies, etc… The Madrid Protocol, however, can be an effective and useful tool for the protection of trademarks in foreign countries, since the Madrid system will offer a unified and less expensive procedure than the traditional method of protection that requires an individual registration in each country in which the company has commercial interests. By using the Madrid Protocol, Brazilian companies will be able to cover the countries in which they have an interest in doing business in the short, medium and long-term, all at once.
IP protection is crucial, thus Brazilian companies must increase their awareness about this issue and seek to protect their IP rights as early as possible. Hopefully the Madrid Protocol will help to increase this awareness.
What will it imply for the Brazilian PTO?
Significant changes will be necessary. With a view to complying with the “Madrid Protocol” system, the BPTO promulgated 04 new Resolutions presenting them for Public Consultations, which are:
Rules on trademark registration in a multiclass system; Rules on the division of trademark applications and registrations in a multiclass system; Rules on the trademark registration under co-ownership; and Rules on the trademark registration under the Madrid Protocol.
The Public Consultations have been completed and we expect now that the BPTO will issue the final texts of such Resolutions. Until today, BPTO does not accept multiclass system and we believe that this shall be a challenge since examiners are not used to exam this kind of applications, which implies a more complex analysis. Also, in the case of co-ownership, this is still not accepted by BPTO and shall be implemented because of the Madrid Protocol. It deserves a new regulation that shall also represent a challenge due to new possible circumstances that were not possible before.
The Decree approved by our country determined that a maximum period of 18 months was established for the BPTO to examine a trademark application, which may be exceeded in the event of opposition to the application and this time limit was always a major concern due to the huge backlogs that BPTO traditionally faced. Currently, as a result of BPTO`s huge efforts, the backlog in the trademark area has been dramatically reduced and the examination of a trademark is taking place in less than 12 months, which is an excellent average. BPTO, however, must be entirely engaged in keeping this timing, especially considering the likely increase of volume of applications being filed/designating our country. This is particularly concerning because no response from BPTO for a Madrid Protocol application that designates Brazil, within 18 months shall cause the automatic granting of the registration, which can cause infringement to third parties rights and even the necessity to go to Court.
What will change for foreign companies willing to protect their IP assets in Brazil?
Foreign companies will have another channel to protect their trademarks in our country which will be more cost efficient. It is important to know, however, that the Madrid Protocol will not become the only way to protect trademarks in our country but will be an alternative manner. The convenience of using each proceeding must be examined by the company, since the traditional manner will remain available and can be more appropriate depending on the circumstances.