Brazil: How has the Madrid Protocol been implemented and what next?

On October 2 2019, Brazil joined the Madrid protocol. The success of this can be proven by numbers.

Until March 5 2020, 3,126 marks were designated to Brazil. The United States, the European market, China, Great Britain and Germany were the top filer countries. Thus far, most applications have come from well-established companies with worldwide reach, such as GSK, BMW, Syngenta Group, Apple, Luis Vuitton, Roche and others.

These numbers are expected to rise when the Protocol is fully implemented but, unfortunately, there are still important procedures pending including the multiclass system, co-ownership and division of applications/registrations. These procedures were scheduled to come into effect on March 9 2020 but were postponed indefinitely by the BPTO.

Another important point is the publication of international designations in the BPTO Official Bulletin.

In accordance with Brazilian law, all designations need to be locally published opening a 60 day term for the filing of oppositions, which are also published, opening another 60 days term for the filing of counterarguments. Up until now no publication has yet taken place which means that (1) applications filed within the protocol are likely to take much longer to be analysed than locally filed applications and (2) it is too early to anticipate the problems that these applications will encounter and how they will be analysed by the BPTO.

Furthermore, there is a catch concerning oppositions as they will only be published locally and will not be displayed on the WIPO portal which means that it is wise to have a local agent monitoring Brazilian designations.

Hiccups aside, once these problems are solved the Protocol will undoubtedly be an important tool to be used by companies to protect their trademark rights in Brazil.

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