Recalling important points about the Madrid Protocol in Brazil!

In force since October 2, 2019 in Brazil, the Madrid Protocol, as  previously discussed, is facilitating the registration of trademarks in Brazil and currently includes more than 120 countries with expressive results. With less than a year after the entry into force, it was possible to observe that 7,896 requests for registration of trademarks made abroad pointed to Brazil as their destination.

The long-awaited speed in examining cases has yet to be confirmed, but we see efforts by the BPTO.

According to the BPTO, around 15% of the brazilian trademark applications are made by foreign companies, which can now carry out a more simplified procedure.

Since then, many changes have been added, allowing the co-ownership and the multiclass system for cases through the Protocol, a total novelty for the Brazilian trademark system.

Among so many novelties, a point that still generates debate is the importance of maintaining a legal representative in Brazil.

The Brazilian Trademark Office does not notify WIPO of some publications that occurred during the trademark process, for example, third-party oppositions and cancellation actions. In this type of situation, it is important that there is a local agent to receive such notification directly from the BPTO or to follow up on publications in the Industrial Property Gazette every week.

In addition, even in the absence of mandatory local agent residing in Brazil to present the international application that designates our country, when opting for the Madrid Protocol, local representation is mandatory to file appeals against rejections or respond to office actions, oppositions, actions of cancellation, that is, to perform any act.

Another important point to be mentioned is the recommendation for a revision of the specification presented by the client at the time of filing through WIPO. We are aware of many cases of unconsciousness related to translation into Portuguese.

For more information, we are at your disposal.