The importance of a representative in the Brazilian designations of the Madrid Protocol

Brazil joined the Madrid Protocol in October 2019 and has since received thousands of requests. Understand the risks and importance of appointing a local representative, even after four years the protocol was in force in the country.

By Rafael Garutti and Lara Damim

First, although the Brazilian Industrial Property Law determines, in its article 217, the obligation of a local representative for trademarks filed directly in the country on behalf of foreigners, in the case of trademarks arising from the Madrid Protocol, the applicant is not obliged to appoint a local representative, it is only necessary to appoint in administrative acts other than the filing and payment of the ten-year fee, for example, oppositions, cancellations, office actions and appeals.

Regarding the oppositions, the Brazilian Trademark Manual (3rd edition, 6th revision) clearly states in item that “the notification of the existence of opposition to a designation of Brazil will be published only in the Brazilian Intellectual Property Magazine (RPI), and no communication will be sent to the owner of the international registration through the International Bureau” (emphasis added). Therefore, even if a representative is not officially appointed, it is important to follow the publications of the Brazilian magazine, in order to identify possible trademarks to be opposed, as well as to respond to the oppositions filed in the country. Although not mandatory, the response to the opposition is highly recommended to provide arguments contrary to those of the opponent, in an attempt to avoid a refusal and delay in granting the designation due to the appeal.

Last Friday, March 15, the Brazilian Intellectual Property Association (ABPI) and the World Intellectual Property Organization (WIPO) organized a seminar that addressed this topic, which was attended by employees of the National Institute of Industrial Property – INPI and the Japan Patent and Trademark Office – JPO. It is interesting to mention that the possibility of the notification of the opposition being implemented for the second half of 2024 has been considered, however, there is still no official information on the subject.

At this meeting, the waiver of the payment of the second part fee in the designations of the Madrid Protocol to Japan was also informed, therefore, this request is only restricted to Brazil and Cuba. It should be mentioned that, in case the applicant misses the legal deadline of said payment, the process will be considered definitely abandoned, and, therefore, a local representative to send the notice of allowance and monitor the legal deadline can be very useful.

It is important to note that Brazil has legal particularities that directly influence the success of registration. For example, Decree-Law No. 9.215/1946 prohibits the practice and exploitation of gambling throughout the national territory; and cannabis-based products are only accepted for medicinal use, according to the standard of the National Health Surveillance Agency (ANVISA).

There are also important reservations in the Brazilian industrial property law itself, which requires, for example, express authorization from the owner, heirs, or successors for the registration of civil names and pseudonyms, under penalty of refusal of registration (Article 124, items XV and XVI, of the BIPL).

In the case of more practical matters, it is possible to mention peculiarities regarding the classification of products and services, name, and address of the applicant (which must be identical, if the applicant holds a trademark registration in the country), but mainly regarding the issuance of registration certificates. Although the certificates are available to the public, the INPI website is in Portuguese and may seem complex to foreigners, so the constitution of a local representative will certainly facilitate the collection and sending of certificates.

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