The Plenary of the Senate approved last Wednesday, May 22, the Project of Legislative Decree no. 98/2019, which formalizes the adhesion of Brazil to the Madrid Protocol, which facilitates and reduces costs for the registration of trademarks around the world. In force since 1996, the Protocol currently has 128 member countries and is administered by the World Intellectual Property Organization (WIPO), a UN participating entity. Brazil's adhesion to the Protocol tends to generate savings in time and money for trademark registrations around the world.
The Protocol allows trademark applications to be filed in a single form for all countries in which trademark protection is sought. After the single application for registration, the granting in each country depends on the national legislation. In addition to a single application for registration, the owner will deal with only one extension date, one currency for payments due and one language.
According to the rules of the Madrid Protocol, the analysis of a trademark application must be made within 18 months from its filing. This will make the response time by the INPI (National Institute of Industrial Property), the Brazilian agency responsible for trademark registration, more predictable and shorter.
Another important change resulting from the Protocol is the permission to register multi-class trademarks (one single registration for multiple classes of activity). The disadvantage is that if the application is rejected for one class, it will also be rejected for all other classes.
Finally, to comply with the Protocol, Brazil will accept that a trademark may have more than one owner, as already happens with patents. Currently, Brazil accepts only one holder per registration and any division of profits or benefits is done by contract between the interested parties.
A large part of the changes resulting from the Madrid Protocol depends on updating the systems used by the BPTO. Therefore, there is no exact date for implementation, but the PTO expects complete adequacy by October this year, according to a statement of the agency.
Barcellos Tucunduva's Intellectual Property team is following all the changes and decisions related to the Madrid Protocol in Brazil and is at your disposal for any clarifications.
