Brazil's Adhesion to the Madrid Protocol for International Registration of Trademarks
Posted on: 2/10/2019
Brazil's adhesion to the Madrid Protocol
Brazil has finally taken all the legal measures that allow the entry into force of the Madrid Protocol in the country.
First, Legislative Decree No. 49 was published in the Official Gazette of May 30, 2019, approving the texts of the Madrid Protocol on the International Registration of Marks. Subsequently, Brazil has notified the World Intellectual Property Organization (WIPO) of its adhesion which, in its turn, on July 02, 2019, notified the member countries of Brazil's adhesion.
On October 01, 2019, Presidential Decree No. 10.033, which promulgates the Madrid Protocol, was finally issued. Thus, the Madrid Protocol goes into effect on October 02, 2019, bringing along new and important practices - and expectations – relating to the Trademark area, not only to the Brazilian PTO (“INPI”), but also to the trademark community
Resolution No. 247/2019, which rules on the registration of trademarks under the Madrid Protocol, as well as the 3rd Edition of the Trademark Manual, both of which were recently issued by the Brazilian PTO in September 2019, provide important information about new practices resulting from the Protocol.
We have indicated below a few important aspects that should be taken into consideration by foreign legal entities or individuals who file applications through the Madrid Protocol, designating Brazil:
- The Brazilian PTO performs a substantial examination on the registrability of trademarks. For this reason, it is highly advisable to conduct searches before designating Brazil, in order to avoid an unfavorable decision resulting from a conflict with third parties’ previously-filed or previously-registered marks, or from the inherent non-registrability of the mark.
- Whenever designating Brazil, the applicant must declare that it is engaged, either directly or indirectly, in the Brazilian territory, in the activity that the mark effectively and legally identifies. This is a legal requirement provided by Article 128, paragraph 1, of the Brazilian Industrial Property Law.
- In order to take any action before the Brazilian PTO, the applicant must have an attorney who is duly qualified and domiciled in Brazil. The Power of Attorney must be presented at the PTO within a maximum term of 60 days, counting from the date on which the action was taken.
- With regard to classification of goods/services, the Brazilian PTO will maintain its position concerning the issuance of office actions in cases of general goods/services and terms equivalent to goods/services considered as illicit. Consequently, we recommend taking special attention to specifications in order to avoid the partial allowance of the application.
- Oppositions filed against an international application will be published in the Official Bulletin issued by the Brazilian PTO, but will not be notified to WIPO. As a consequence, the PTO recommends, in its Trademark Manual, that “the owner of the international registration monitor publications in the Official Bulletin in order to become aware of eventual oppositions and submit replies, if it so wishes”.
- Upon examining the legality, distinctiveness, veracity and availability of a trademark, the PTO will not issue office actions regarding the exclusion of non-registrable elements of the mark in view of the impossibility of changing the image of mark object of an international application designating Brazil. This type of office action takes place in connection with national applications but will not be issued for international applications, thus creating a higher probability of international applications receiving a rejection decision.
- International registrations obtained through the Madrid Protocol before October 02, 2019 cannot be extended to Brazil, as per Article 14, “5”, of the Madrid Protocol.
- The recordal of license agreements before WIPO will not cause any effects in Brazil, because Brazilian Law provides the recordal of trademark license agreements, as per Rule 20bis, (6), (b), of the Common Regulations.
- As for three-dimensional marks, whenever a designation received by Brazil refers to parts of a signed applied for as a three-dimensional mark, such as a bottle cap, no office actions will be raised by the PTO requesting that the plastic form be presented in its entirety. This type of office action takes place in connection with national applications but will not be issued for international applications.