T i m e l i n e

\ October 2, 2019 The Madrid System became effective in Brazil

\ May 12, 2020The first Brazilian designations were published for opposition purposes

\ September 15, 2020Co-ownership of Trademarks became a possibility in Brazil

\ October 13, 2020The BPTO published the first decisions examining BR designations(53 allowance decisions)

S o m e l i m i t a t i o n sc o n c e r n i n g B r a z i l

\ BRAZILIAN DESIGNATIONS ARE AVAILABLE FOR FOREIGN FILINGS EFFECTED AS FROM OCTOBER 2, 2019;

\ DIVISION OR MERGER OF AN INTERNATIONAL REGISTRATION HAVE NO EFFECT IN BRAZIL;

\ LESS LATITUDE FOR SPECIFICATIONS OF PRODUCTS AND SERVICES;

\ LICENSE AGREEMENTS MUST BE RECORDED LOCALLY;

\ NON-CONVENTIONAL MARKS ARE NOT REGISTERABLE IN BRAZIL;

\ THE INTERNATIONAL BUREAU (WIPO) WILL NOT BE INFORMED BY THE BPTO OF CERTAIN LOCAL PROCEEDINGS, SUCH AS OF THE FILING OF OPPOSITIONS.

I n f o r m a t i o n o f i n t e r e s tc o n c e r n i n g B r a z i l

\ DECLARATION OF ACTIVITY UPON FILING WITHIN BRAZILIAN DESIGNATIONS

\NO PROOF OF USE ARE REQUIRED FOR FILING, REGISTRATION OR RENEWALS

\ ASSIGNMENTS MUST INCLUDE ALL IDENTICAL AND SIMILAR MARKS FOR IDENTICAL AND SIMILAR GOODS AND SERVICES

\ TRADEMARK REGISTRATIONS ARE LIABLE TO CANCELLATION ON THE GROUNDS OF NON-USE (5 YEAR RULE)

C o n t r o v e r t i a l p o i n t c o n c e r n i n g B r a z i l

\ NEED OF LOCAL REPRESENTATION FOR VALIDITY OF REGISTRATION

I n f o r m a t i o n o n t h e p r o c e e d i n g s c o n c e r n i n g i n t e r n a t i o n a l r e g i s t r a t i o n s f i l e d t h r o u g h M a d r i d ( B r a z i l i a n d e s i g n a t i o n s )

Most clients ask when they should (or shouldn’t) file a trademark application directly before the Brazilian PTO now that Brazil became a member of the Madrid Protocol since October 2019.

We have summarized our first impressions of the international system and the pros and cons of choosing one or the other way to protect a trademark in Brazil. Here are our thoughts:

W h y u s e M a d r i d ?

The Madrid System is in force in Brazil since October 2, 2019. The first Brazilian designations started being published for opposition purposes on May 12, 2020;

Madrid simplified the proceedings so it is quite easy to extend an existing international registration to Brazil, besides managing renewals;

The use of a local counsel is encouraged to monitor local proceedings and assist in the regular prosecution as determined by local Laws;

Nice classification has been widely used in Brazil for over 20 years it is unlikely that the BPTO will be more stringent when analyzing international filings towards wording and classification than it is in a regular national filing (though no international filings have been published yet);

The Office will notify the International Bureau of the decisions concerning provisional refusals and decisions on nullity or revocation actions;

S o m e l i m i t a t i o n s o f t h e M a d r i d S y s t e m i n B r a z i l :

Despite the simplified proceeding, in respect of international registrations effected under the Protocol before the date of entry into force the subsequent designation will NOT be available (Article 14(5) of the Protocol). Brazilian designations will be available for foreign filings effected as from October 2, 2019;

Division or merger of an international registration has no effect in Brazil and Multiclass filings are still not available;

The registrant automatically declares by designating Brazil that it is effectively engaged in the business in connection with the goods and services are being claimed;

W h y a v o i d M a d r i d ?

Brazilian IP law requires that the registrant appoints a local representative to service their registrations. This requirement was created to enable any party to challenge a mark in Brazil in a cost effective way, otherwise the titleholder would have to be served through a rogatory letter increasing litigation costs if no judicial cooperation treaty was in place between Brazil and the country of the applicant/registrant;

Multiclass filings are not available yet in Brazil in the local route. However, international filings may cover more than one class, being subject to individual examinations on both relative and absolute grounds;

The international bureau will not be informed of certain local proceedings (such as of the filing of oppositions) so the registrant of an international registration Brazil may not be properly advised of setbacks and potential alternatives to overcome a provisional refusal;

W h y a v o i d M a d r i d ?

Act preventively may save costs in several ways, so having a local partner to assist you during the trademark prosecution and keep a close watch on developments may be a good alternative to secure trademark protection in the fastest and most effective way in Brazil.

Daniel has developed a proprietary software capable of reading WIPO’s database to seamlessly monitor all the developments of an international registration as it is prosecuted by the Brazilian PTO.

A r t i c l e s

Co-ownership of Trademarks in Brazil: Key Changes

By Isabella Cardozo and Anne Caroline Lapa de HolandaBrazil: How has the Madrid Protocol been implemented and what next?By Isabella Cardozo and Anne Caroline Lapa de Holanda

Madrid Protocol in BrazilBy Isabella Cardozo and Lívia Helayel Responding adeptly to Brazil’s trade mark system

By Isabella Cardozo and Rafael Rocha

How is the Madrid Protocol faring in Brazil?

By Robert Daniel-Shores and Roberta Arantes Madrid protocol: The road to Madrid

By Robert Daniel-ShoresBRAZIL: Co-Ownership of Trademarks Approved

By Fernanda QuentalBrazil about to enter the Madrid System

By Roberta ArantesINPI’s decisions can be challenged at Brazilian courts

By Robert Daniel-Shores

T H A N KY O U