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1 August 2013TrademarksAndrew Bellingall

At last! Brazil to join Madrid

At the beginning of March 2013 the Brazilian Inter-ministerial Intellectual Property Group approved a recommendation for Brazil to join the Madrid Protocol.

It is the government's intention to put the matter before Congress by the end of the year. Once it comes into effect in Brazil, the Madrid Protocol, as an international treaty, will have the status of a constitutional amendment and so will be hierarchically superior to the existing Industrial Property Law. Any provisions of the current law which are not consistent with the Madrid Protocol will therefore be implicitly revoked.

As most readers know, the Madrid Protocol is an international agreement administered by the World Intellectual Property Organization (WIPO), which allows for the filing of an application for trademark registration simultaneously in the various registration offices of the member countries of the agreement throughout the world, or the extension of a national application into an international application, to which various member state countries may be added when of interest.

Adherence is very much in line with the current administration’s initiatives to boost Brazilian exports, as it will allow Brazilian companies considering exporting to protect their trademarks overseas in a more cost-effective and straightforward manner than is currently possible.

Reform of the INPI

Although compliance with Brazilian trademark law may not be a stumbling block to adherence to the Madrid Protocol, the procedures of the Brazilian patent and trademark office (INPI) and current mechanics of how an application is filed and processed still need to be updated.

The protocol provides for a maximum term of processing applications of 18 months (or longer in cases involving oppositions). There have been major improvements at the INPI, particularly as a result of electronic filings, which now account for around 74 percent of all new applications, but even in cases where there has been no opposition it still takes around 24 to 30 months for applications to be allowed, rejected or suspended, the latter occurring when an application is blocked by a prior application.

On April 26, 2013, the INPI presented a seminar to users which showed a number of key changes that will soon be implemented to facilitate the introduction of the Madrid Protocol.

"Subsequent actions such as renewal and recordals of changes may be effected through a single adminstrative process, which is valid for all jurisdictions."

Through measures including a new system allowing multiclass filings, multiple owners, and the introduction of an unlimited specification of products and services (rather than having to choose the most relevant goods and services from a list provided by the INPI), the INPI has shown that it is interested in meeting the requirements of its users, and various key demands of the Madrid Protocol.

Users will also be able to use the trilateral list of goods and services adopted jointly by the US Patent and Trademark Office, the Office for Harmonization in the Internal Market (OHIM) and the Japanese Patent Office, which will further assist Brazilian applicants who want to file in key jurisdictions abroad.

Implementation of this new system, called IPAS, was scheduled for the beginning of July 2013, and it will allow registered users to access various services directly, such as the filing of electronic petitions (which has been possible for some years), but also to obtain information regarding due dates for renewals, payments in general, and notifications to be published in the Official Bulletin.

Another innovation presented was the creation of a tool called ‘delivery’. This tool will be available online for obtaining certificates, copies of documents filed and any documentation requested, upon payment of a fee.

Thus, the INPI plans to eliminate costs related to providing documents on paper, since the documents will be made available digitally, and certified by the INPI. The aim is to bring innovations to the system which will bring about the extinction of petitions filed on paper.

Pros and cons

The Madrid Protocol allows a trademark owner who has an existing trademark application or registration (known as the ‘basic application’ or ‘basic registration’) in a member jurisdiction to obtain an ‘international registration’ for its trademark from WIPO.

The main advantage of the Madrid Protocol is that it allows trademark owners to obtain protection in any or all member states by filing one application in one jurisdiction with one set of fees. Subsequent actions such as renewal and recordals of changes of address may be effected through a single administrative process, which is valid for all jurisdictions.

Another advantage is that the trademark owner may file in one jurisdiction to begin with, and then extend the protection afforded to the international registration to various other member jurisdictions, at any time. This allows trademark owners to add further jurisdictions if they become of commercial interest or when it becomes cost-effective to do so.

The main perceived disadvantage of the Madrid system is that the international application or registration is dependant on the basic application or registration. That is to say that any refusal, withdrawal or cancellation of the basic application or basic registration within five years of the registration date of the international registration will lead to the refusal, withdrawal or cancellation of the international registration. However, figures show that less than 0.5 percent of international registrations were cancelled as a result of central attack.

Summary

It appears that after more than 10 years of pragmatic procrastination, there is finally sufficient political will to see the Madrid Protocol implemented in Brazil and the obstacles overcome. This political will comes from the belief that Brazil’s adherence to the protocol will stimulate Brazilian exports and trade in general and therefore boost the Brazilian economy.

We will see how this plays out, noting that the bill introducing the Madrid Protocol has been idling in Brasilia (the seat of government) for more than three years. But it finally appears that by the end of the year, or at least by the World Cup in Brazil in June 2014, Brazil will finally have adhered to the Madrid Protocol.

Andrew John Bellingall is a partner at Daniel Advogados, Rio de Janeiro and São Paulo, Brazil. He can be reached at andrew.bellingall@daniel.adv.br

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