The Madrid Protocol – Embracing the New Challenge

*By Roberta Hokama

Brazil has acceded to the WIPO – International Trademark System and the Madrid System will enter into force on October 2, 2019 (Resolution No. 247/2019).

Being the 105th member of this successful global cooperation among 121 countries is a win-win situation in terms of trademark protection. The Madrid Protocol will benefit Brazilian brand owners to register their trademarks worldwide at lower costs and in a much simpler way. Likewise, foreign countries will be able to expand their business toward Brazil, one of the largest economies in South America.

The Brazilian Patent and Trademark Office – INPI has prepared new procedures that are being implemented along with a series of measures to ensure a greater efficiency and uniformity in the processing of trademark applications and registrations. Some of these measures include a reduction on the time examination to approximately 12 months, the development and adaptation of IT systems, adjustments among internal procedures, the issuance of Normative Acts, Rules and Regulations.

In Brazil, the Madrid Protocol brings the possibility to file multiclass applications (Resolution No. 248/2019), the availability of co-ownership (Resolution No. 245/2019) of trademark applications and registrations and the division of applications and registrations (Resolution No. 244/2019). The local trademark owners will enjoy the benefit of requesting the protection of their marks in any of the member countries through a single application, with less bureaucracy and a streamlined process of obtaining and managing trademark registrations filed abroad, saving time and reducing costs.

Notwithstanding, it should be noted that although the aforementioned Resolutions will go into effect on October 2nd, 2019, the filings related to the multiclass system, co-ownership and division of registrations and applications will only become available at the INPI e-System as of March 09, 2020.

For the clients overseas designating Brazil, the protection resulting from any international registration under the Protocol prior to October 2nd cannot be extended to Brazil. Moreover, it should be noted that the international mark should be used in the territory as soon as protection is granted in Brazil and in order to act before the INPI a qualified attorney should be appointed.

Despite having extensive knowledge of the system abroad and with the entry of the Madrid Protocol just around the corner, the VILELACOELHO trademark team has embraced the new challenge by fully preparing to deal with the new tool locally to properly assist both national and foreign clients.

Feel free to contact us and to get more involved with this matter at any time.