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Brazil: How is the Madrid Protocol faring in Brazil?

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Brazil is one of the newest members of the Madrid Protocol. It has been part of the protocol since October 2 2019. An international system was long overdue and less than 10 months in it has received 5,500+ BR designations, covering 13,300+ classes.  

Accession was strategic for Brazil's plans to foster international business. However, first impressions indicate hurdles to be addressed by the Brazil Patent and Trademark Office (BPTO). Until late June, under half of the received BR designations were published, and none examined on the merits. 

Below is an overview of the main pros and cons of seeking trademark rights through Brazilian designations:

Advantages

· Simplified proceedings for extending international registrations and managing renewals;

· Nice classification has been used for over 20 years in Brazil. The BPTO is expected to be less stringent when analysing international filings when it comes to wording and classification, although no international filings have been examined yet; and

· The BPTO will notify the international bureau of decisions concerning provisional refusals and decisions on nullity or revocation actions.

Disadvantages

· Division or merger of an international registration has no effect in Brazil;

· Multi-class filings are not available yet. BR designations covering multiple classes run the risk of being split into separate applications and subject to independent examinations (to be seen);

· Registrants must declare that they are effectively engaged in the business related to the goods/services included in the BR designation;

· Brazilian IP law requires foreign registrants to appoint local representatives with powers to be served with summons, under penalty of cancellation of a mark after grant; and

· The international bureau will not be informed of specific notices regarding local proceedings, such as of the filing of oppositions and nullity actions. Registrants of BR designations therefore require local counsel to monitor said notices in order to submit defences in a timely manner.

Robert Daniel-Shores and Roberta Arantes

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