Brazil enters Madrid Protocol, the International Trademark System

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11 de julho de 2019

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Brazil has approved the Madrid Protocol and the Common Regulations under the Madrid Agreement concerning the International Registration of trademarks and the Protocol Relating to that Agreement.

The system is expected to be effective in Brazil as of October 2nd, 2019, once the three-month period after the deposit of the accession instrument with WIPO has elapsed. Within the same period, the Brazilian Congress must make the internal promulgation of the Protocol, a formal requirement set forth by the Brazilian law in order to an international agreement be effective in Brazil.

Brazil has made 8 declarations concerning the operation of the Protocol, depicted below:

  1. The time limit for the Brazilian Trademarks Office to notify a refusal of protection shall be 18 months instead of one year (Article 5(2)(b) of the Protocol).
  2. The time limit for the Brazilian Trademarks Office to notify a refusal of protection which results from an opposition may, under certain conditions, be after the expiry of this 18-month period (Article 5(2)(c) of the Protocol).
  3. The Brazilian Trademarks Office will receive an individual fee in connection with each international registration in which Brazil is designated under the Protocol, and in connection with the renewal of such registration. Such fee may be higher than the standard fee set forth by WIPO, but it will not exceed the fee that the Brazilian Office would receive for the proceedings which are not under the Protocol (Article 8(7)(a) of the Protocol).
  4. The fees charged by the Brazilian Office comprises two parts, the first part to be paid at the time of filing the international application or the subsequent designation, and the second part to be paid at a later date, determined in accordance with the Brazilian rules (Rule 34(3)(a) of the Common Regulations).
  5. The international registration effected under the Protocol before the date of entry into force of the Protocol within the Brazilian territory cannot be extended to Brazil (Article 14(5) of the Protocol).
  6. The languages accepted under the Protocol in Brazil will be English and Spanish (Rule 6(1) of the Common Regulations).
  7. Any provisional refusal that has been notified to WIPO is subject to review by the Brazilian Office, whether or not such review has been requested by the holder, and any decision taken on the said review may be the subject of a further review or appeal before the Brazilian Office (Rule 17(5)(d) of the Common Regulations).
  8. The recordal of licenses in the International Register has no effect in Brazil (Rule 20bis(6)(B) of the Common Regulations).

The Brazilian Trademarks Office has taken several measures in order to get ready to the Protocol, such as:

  • The backlog of cases has plummeted. At present an application has been examined and issued into registration at approximately 8-10 months from the filing date.
  • Drafted rules regarding co-ownership and multiclass system are currently under discussion.

Our Intellectual Property team is at your entire disposal for any requirements you may have on this or any other IP issue, via the e-mail pi@smabr.com or telephone +55 11 31462400.

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