MADRID PROTOCOL IN BRAZIL: BALANCE OF THE FIRST YEAR AND ITS BENEFITS

According to statistics of the first year of validity of the Madrid Protocol in Brazil (up to September 30, 2020), national users have filed 109 applications for International Registration at the INPI (BRPTO – Brazilian Patent and Trademark Office). On the other hand, the number of designations received by INPI from foreign applicants exceeds 8,000 requests.

The Madrid Protocol, international treaty centrally administered by the International Secretary of the World Intellectual Property Organization (WIPO), relating to the international registration of trademarks, has been in force since April 1996 and was ratified by more than 124 countries representing more than 80% of world trade.¹

The Madrid Protocol came into force in Brazil on October 1^st, 2019, bringing several innovations to the Brazilian trademark registration system, facilitating the centralized filing and management of trademark applications by the brand owners in several countries.

The registration of trademarks from Brazil with the extension of its effects abroad has become quick and simple. Within the previous model, for instance, if a company would need to register its trademark in Colombia, China, Australia, USA, European Union, Mexico, United Kingdom, Canada and Japan, it would be necessary to engage an attorney-in-fact in each country, to incur in several fees, as well as to get involved in the implementation of several power of attorney instruments, translations and additional bureaucracy.

Now it is quite simple, for instance, to extend an already existing international registration to Brazil, besides enabling the centralizing in renewals management.

Other aspects of the Madrid Protocol are:

– With over 1.3 million trademarks registered, the Madrid Protocol is the preferred choice for international trademark registration among export-oriented brand owners;

– The possibility of the multiclass system: it allows the filing for all classes envisaged by the brand owner through one single application. In the case of Brazil, however, the analyzes will be carried out by class and upon payment of the full amount of charges for each requested class;

– International order system originated in Brazil: the INPI acts as the Office of Origin and as the Designated Office;

– There is no need to pay for translations nor to hire a representative in every country to which the extension of effects of a trademark is envisaged;

– Payment of one single set of fees to apply for trademark protection in multiple territories;

– The possibility of co-ownership;

– The division of applications became allowed and shall be done electronically upon filing the division may occur, for example, in connection with a suspended request.

Brazil has one of the world’s largest consumer market, with an overall population of 213 million as of 2021,² appearing as the largest economy in South America and as one of the largest of the world.

The ratification of the Madrid Protocol is embodied in a larger shift in focus by Brazil into the promotion of innovation, and the development of Intellectual Property and technology aiming at the country’s growth.

Checked on August 9^th, 2021. Available at: https://www.wipo.int/madrid/en/madrid_benefits.html#:~:text=With%20over%201.3%20million%20trademarks%20registered%2C%20the%20Madrid,brand%20owners.%20Convenient%20management%20of%20global%20trademark%20portfolios

Checked on August 9^th, 2021. Available at: https://www.ibge.gov.br/apps/populacao/projecao/box_popclock.php