Brazil is to join the Madrid Protocol on 2 October after depositing its accession instrument to the World Intellectual Property Organization (WIPO) in Geneva.
This is good news for brand owners in our view. Brazil is the biggest economy in Latin America and has an estimated population of over 210 million, making it the fifth most populated country in the world. It follows on from the recent accession of Canada to the system.
The Madrid Protocol provides a convenient and cost-effective solution for registering and managing trade marks worldwide. A single application can be applied for with the payment of one set of fees and can include up to 121 countries. Put simply, designated countries have 12 months (or 18, if they have notified WIPO) in which to refuse or protect a mark.
At this time, Brazil has not notified WIPO on any special circumstances surrounding its membership. For example, it may not accept marks that pre-date its accession date, which could prevent subsequent designations being filed immediately, although generally few countries make this notification.
It is highly likely that Brazil will choose to receive an Individual fee (similar to the amount charged for national applications) and will choose to get an 18-month examination timeline. Despite this, we can expect challenges for the Brazilian National Institute of Industrial Property (INPI), which struggles with examination backlogs, to meet this timeline.
Where a national Intellectual Property Office does not notify WIPO of a refusal within 12 or 18 months then there is tacit acceptance of a trade mark. Brand owners should maintain a watch for their important trade marks – International Registrations are published in the WIPO Gazette – so they can keep an eye on any new filings in Brazil that “slip through” examination.
The official language of Brazil is Portuguese, which is not one of the official languages of the Madrid Protocol. They are English, French and Spanish. Brand owners may need to anticipate obtaining official documents from the INPI in Portuguese in case they need to enforce their rights in the courts or with customs.
Brazil is only the fourth country in Latin America – after Cuba, Colombia and Mexico – to join the Madrid Protocol. With the accession of a regional power to the system, we may see an increase in membership from the wider region.
In summary, we feel the accession of Brazil to the Madrid Protocol will be welcomed by worldwide brand owners, especially those with a commercial interest in Brazil. We anticipate these changes to be beneficial in terms of saving time and costs.
If you have any questions in relation to the above or would like to discuss adding Brazil to an existing International Registration, or including it a new International application (from 2 October), please do get in touch.