The Madrid System will enter into force in Brazil on October 2, 2019, three months after the delivery of the instrument of accession of Brazil to WIPO. In the wake of the adherence to the international system the Brazilian Patent and Trademark Office (BPTO) released four resolutions that not only address ratification, but also touch new and uncharted areas for international companies with trademarks in Brazil, including adopting necessary international norms for the local trademark regime, like multiclass filings, co-ownership, and divisional applications and registrations adding flexibility to the local system.
According to the best information available, the BPTO intends to be fully integrated into the Madrid Protocol on October. This aggressive deadline may delay the implementation of new procedures to local filings while the BPTO struggles with its electronic filing system and aligning the trademark examination and fee structure. The Resolutions were published for public consultation so amendments to the original drafts are still possible. Nothing new as almost every new member state experienced certain difficulties or delays adjusting upon ratification of Madrid.
For the Brazilian IP Community, imminent adherence to the protocol already helped reduce drastically the notorious backlog on the trademark side that is now of only 12 to 13 months for a decision on recent filings. The Protocol also brought hope to national applicants that desire to protect its brands abroad, as it promises to facilitate management of international portfolios and lower trademark registration costs.
A lot of effort and investment has been made to achieve WIPO’s requirements to accede the Protocol and place Brazil among the already 120 countries that are covered by the system. Weighing pros and cons, acceding the international system has evidently more benefits at least for now than we might have expected in the beginning of the discussions over 10 years ago.
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*Roberta Arantes joined Daniel Advogados in 2013 and has over 14 years of experience in the field of intellectual property. Her practice is focused in IP litigation and counseling on trademark and design infringement cases. Her career began in 2001 in the former Momsen, Leonardos & Cia firm. Roberta also teaches in several post-graduation programs in Brazil. Roberta provides litigation and consultancy in IP and related matters, valuation and analysis of industrial property rights and portfolio management.
*Cecília T. Delgado de Moura joined Daniel Advogados in 2004 and has almost 15 years of experience in the field of intellectual property. Her expertise covers all aspects related with the prosecution of trademark applications in the Brazilian PTO as well as in foreign countries. She is engaged with client in many different fields. Cecília has full acknowledge in the normative instructions, examination guidelines, Brazilian Intellectual Property Law and major treaties in this area.
