Brazil: The Madrid Protocol

The Brazilian Government is considering the possibility of joining the Madrid Protocol, which deals with international mark registrations, and the National Congress will soon analyze the matter.

Thus has been a hot debate, since offices dominantly performing administratively are against it alleging that the possibility of having a mark registered abroad would reduce dramatically their business. Those performing in the legal and litigation fields say that there may be a slight decrease in administrative services in the beginning, but it would be set off by an increase in both services related to mark conflict issues in the Judiciary or challenge procedures at the Brazilian Patent and Trademark Office ("BPTO").

The BPTO’s President is a vehement advocate of Brazil’s joining the Protocol, because the reduction in both time necessary to grant a registration (which is currently about 15 to 30 days) and costs are the main attractions of an international registration, as governed by the Madrid Protocol.

Indeed, a major advantage for businessmen is the significantly reduced costs to have their marks registered in other countries, not to mention the considerably faster process.

However, the threat of decreased work is not the only concern of intellectual property agents. They assert that businessmen will be at risk because the BPTO will not be fully prepared to conduct all the research and survey necessary to ensure no similar marks are registered in the country. That is because the Protocol establishes that marks will be mandatorily registered after eighteen months of the application date, irrespective of whether or not due research and search have been made or completed.

What happens is that the BPTO has severe structural problems. Administrations have failed to invest in technology and staff, which made the Office’s processes extremely sluggish. Today, the BPTO takes 2 to 3 years to complete a registration process.

In addition, early 2001 Brazil adopted the Nice Classification, which entailed changes in the Office database, classification of marks undergoing registration and registrations being renewed.

All that drawback delays even more the approval of a mark registration in Brazil and may cause several marks to be granted without being subject to the so necessary prior investigation. This is very likely to give rise to several conflicts of marks registered in the country, to the prejudice not only of the holders of those marks but also the consumers, since they may buy products or hire services other than those intended.

Some articles in the Madrid Protocol are also said to violate the Brazilian Federal Constitution, such as those providing for the official language of the procedures; vested rights; preference to rights of foreigners rather than the nationals; delegation of authority; among others.

As we see, Brazil is far from reaching a consensus that would allow it to joint the Protocol. Even if the Government chooses to join the Protocol, it will most certainly face countless judicial actions to bar its implementation.