Number of trademark applications coming from abroad
It has been two years since Brazil joined the Madrid Protocol and it is now possible to make more grounded comments on the developments and consequences of its implementation.
First, it is important to recapitulate some of the concerns regarding the adhesion mentioned in the past, such as the inequality of treatment between Brazilians and foreigners, according to which foreign trademark applications made through the Madrid System would have greater advantages over the national ones.
It was also a concern that international applications from the Madrid Protocol would flood the examination proceedings at the Brazilian Patent and Trademark Office (BPTO), which would further hamper the workflow of the examiners.
A third concern was that there would be a drastic reduction in the demand of services to Brazilian IP firms, given the facility that the Madrid Protocol would provide to trademark owners.
Nonetheless, despite these potential issues, Legislative Decree No. 10,033, which formalised Brazil's adhesion to the Madrid Protocol, was issued in October 2019.
Number of trademark applications coming from abroad
Starting with the least controversial point, there has been, so far, no substantial increase in trademark applications coming from abroad.
It is estimated that, through the Madrid Protocol, there were around 1,999,000 international applications designating Brazil in 2019, and 9,600,000 in 2020, according to information from the World Intellectual Property Organization (WIPO) database.
However, there was also an increase in the number of applications filed directly at the BPTO, which rose from approximately 241,711,000 in 2019 to 268,958,000 in 2020, the first year of the covid-19 pandemic.
These numbers, in addition to confirming that the expected flood of new international applications coming via the Madrid Protocol did not occur, also indicate that Brazilian IP lawyers and agents are not lacking in work or demand, since, in general, the BPTO experienced an increase of 17.38% in the total number of applications.
Also in this regard, it is important to note that in the first half of 2021 alone – therefore, in the second year of the coronavirus pandemic – the total number of applications filed at the BPTO rose again, this time by 59.20% in the same period.
It can therefore be confirmed that after Brazil joined the Madrid Protocol, there was indeed an increase in the number of new applications at the BPTO. However, unlike what had been argued before the accession, such applications were not necessarily international applications filed via the Madrid Protocol, but instead represented a general increase – the applications were mainly made through the national route.
It is clear that the reality of the covid-19 pandemic, which surely influenced the number of trademark applications designating Brazil, cannot be ignored. It is possible that such numbers may still increase in the near future.
It is now also possible to verify whether the adhesion brought to the BPTO any improvements or advances in administrative proceedings relating to the examination and grant of trademark applications.
Looking at three randomly chosen applications filed at the BPTO in 2017(1) – before the legislative decree that acceded to the Madrid Protocol – it took an average of 24 months to complete the trademark registration cycle, from the filing dates until the issuance of the certificates.
Using the same criteria, but looking at three applications filed in 2020,(2) it is possible to note a considerable decrease in this timeframe – it took an average approximately nine months to fully examine these three trademark applications.
Needless to say, this reduction has brought positive consequences for the parties involved in the process of registering a trademark – namely:
- the applicant, which receives its registration certificate earlier;
- the BPTO, which collects all official fees more quickly; and
- IP lawyers and agents, who also accelerate their cash flow by being able to issue invoices quickly.
Therefore, considering the implementation of new processes and procedures derived from the activities that the BPTO assumed with the adhesion to the Madrid Protocol, it appears that there has been a gain in efficiency. The BPTO, in order to be able to examine and grant a registration within the period stipulated in the system, has managed to considerably shorten the period required, which today is around nine months.
Other advantages have been seen in administrative procedures aimed at simplifying the registration process in Brazil, such as the possibility of co-ownership of applications and trademark registrations, which was implemented in 2020.
The issue relating to the legitimacy of foreign applicants has also been resolved through the inclusion of a footnote in the Madrid Protocol forms (MM2, MM4 and MM5) with the same wording contained in the national trademark application form. Such wording states that it is necessary for the applicant to carry out activities compatible with the products and services claimed in the trademark application, granting equal treatment to foreign and national applicants.
Regarding changes of ownership, the Madrid Protocol provides for the possibility of a contracting party to declare that a given change will not take effect in its territory if there is a legal impediment. Thus, the examination of assignments involving international applications will follow the same procedure as the national ones, in line with articles 134 and 135 of the Brazilian IP Law, according to which similar marks that are not assigned to a new owner should be cancelled.
In these three examples (co-ownership, legitimacy and change of ownership), new procedures have been introduced that have facilitated the administrative allowance for such improvements without the need for any structural changes in Brazilian law.
It should be noted that adjustments still need to be implemented. For example, the multi-class system for national applicants still needs to be introduced, as does the division system of trademark applications and registrations. There is no forecasted start date for the introduction of these systems, mainly in view of the pandemic and various IT obstacles that the BPTO needs to resolve.
Another relevant point to note is that, with the adhesion to the Madrid Protocol, it was expected that Brazilian trademark owners and entrepreneurs would be encouraged to take their trademarks and businesses abroad, given the facilities provided by the Madrid System. However, in the past two years, this reality has yet to materialise. According to the WIPO database, 217 international applications have been filed by Brazilian applicants via the Madrid Protocol. It is estimated that there were 26 applications in 2019, 103 in 2020 and, so far, 74 in 2021.
Once again, it is important to consider the covid-19 pandemic, which has notably affected Brazilian businesses. Aside from that, it is also worth mentioning that, according to WIPO's database, these numbers are within those expected of a country that has recently adhered to the Madrid Protocol and, as such, still needs to further develop the use of this tool.
Nevertheless, as the world is returning to normal and recovering from the complicated reality of the pandemic, there is a fair expectation that Brazilian applicants will get on board with the Madrid Protocol and expand their business abroad. There is also a great desire for the Madrid Protocol to be fully implemented by the BPTO.
For further information on this topic please contact Eduardo Magalhães Machado or Stephany Araújo at Montaury Pimenta, Machado & Vieira de Mello by telephone (+55 21 2524 0510) or email ([email protected] or [email protected]). The Montaury Pimenta, Machado & Vieira de Mello website can be accessed at www.montaury.com.br.
(1) Reg No. 912274212, Reg No. 912577495 and Reg No. 912322217.
(2) Reg No. 919114415, Reg No. 919656382 and Reg No. 918990874.