On October 2nd, 2019, Brazil’s trademark registration system took an essential step to align with other 120 acceding countries.
Also known as “Madrid System”, it consists in an international and centralized system that enables trademark holders to modify, renew or expand their trademark portfolio taking advantage of a single act to register and manage all their trademarks in a global level.
The system, administered by the International Bureau of World Intellectual Property Organization (“WIPO”), is governed by two international agreements: the “Madrid Agreement (1891)” and the “Protocol Related to the Madrid Agreement (Protocol)” (which was adopted in 1989 and applied in April 1st, 1996). Since Paris Convention arises to improve the industrial property protection mechanisms, any of its members is eligible to become part of Madrid Agreement and/or the Protocol as well.
The trademark holder that intends to use the Madrid System has either to be domiciled, or to have an industrial or commercial establishment in any of the member countries.
Brazil’s late adherence to the Madrid Protocol derives mainly from the prominent backlog of trademark applications that Brazil’s Patent and Trademark Office (“INPI”) has recently been able to dispel.
INPI held public consultations between May 14th and June 27th, 2019, with the purpose of discussing four matters: (a) trademark register in a multiclass system; (b) the division of trademark applications and registrations into a multiclass system; (c) regime of co-ownership of trademarks; and (d) trademark register under Madrid Protocol.
Following the conclusion of these public consultations, new resolutions defining the rules were published by INPI, and they entered into effect from October 2nd, 2019.
There is no doubt that the novelty implies significant changes for trademark registration in Brazil, and, for that reason, INPI published a new edition of the Trademark Manual (Resolution INPI/PR 249, of September 10th, 2019), with updates to guidelines of trademark examination and inclusion of new procedures. However, it is essential to note that the application regarding the regime of co-ownership of trademarks will be available only from March 9th, 2020, the same date on which the division of trademark applications and trademark registrations will enter into effect.
Basically, due to a “centralized management of registrations”, the use of the international registration system allows protection in multiple markets, especially those in different regions. Applicants benefit from the simplification of the procedure by reducing filing and management costs. Thus, the Madrid System ensures greater flexibility in trademark expansion plans and strategies, as it allows for new country applications to be added a posteriori.
Therefore, instead of filing multiple independent applications in different countries and languages at individual rates, the trademark owner can now submit his/her trademark application in a single process, in an only language and a single currency.
Such convenience makes it unnecessary to hire a local attorney(unless an opposition is filed or administrative nullity proceedings, lawsuits or appeals), and avoids payment for translations in multiple languages.
In addition, the management of registrations is simplified, in a way that there is only one registration to be renewed, and any changes can be requested from the International Bureau of WIPO through a simple administrative procedure (that is, limitation of the list of products or services with regards to any of the designated countries, changes to the owner’s address, among others).
Adherence to the Madrid System also eases the analysis of applications by local Offices (in Brazil’s case, the INPI), as they will not need to examine if the international trademark applications meet the formal requirements necessary for review, classification of products or services or publishing trademarks. Accordingly, the examination and granting of registrations tend to be quicker.
International registrations dependent on the basic application thus remain for a period of five years, in a way that if the primary one loses its effect (through cancellation or lack of renewal), the protection granted to the international registration will cease. If the basic registration is refused, withdrawn, or loses its effects, the resulting one may be canceled. Once the aforementioned five-year period expires, the international registration becomes independent of the basic application or registration. The extent of an international registration is ten years, renewable for another ten years upon payment of the fees due.
The tendency, therefore, is an absolute bombardment of applications that enables the exclusivity of a trademark in the most diverse countries and classes, even though their owners are not sure of the need for such broad and comprehensive protection.
It is easy to foresee the multiplication of trademark conflicts and, with them, the indispensability of less bureaucratic and more technical management, with the adoption of measures that allow the right to the exclusive to be destined to those who are really entitled to it.
Although today there are still doubts about some aspects, the adherence to the Madrid Protocol will simplify trademark registration in Brazil and the other 120 acceding countries, optimizing time and cost in the registrations and, consequently, generating an advance in the trademark registration system and business competitiveness.