Madrid Protocol: Risks to not appoint a representative in the Brazilian designations

Since October/2019 it is possible to perform the Registration of Trademarks through the Madrid Protocol in Brazil, although subsequent designation for existing registrations requested before the mentioned date are not allowed. Trademarks using that system started to be published in May before the Brazilian Industrial Property Official Gazette (RPI), opening a deadline of 60 days for opposition of others.

However, according to item of BPTO Trademark Guidelines, oppositions will be only published at the Brazilian Industrial Property Official Gazette (RPI) and Brazilian PTO will not inform WIPO about them.

It is important to mention that the Brazilian TM Office differs from other TM Offices around the world and the publication does not mean that Examination has been carried out. The publication by the Office aims to present the mark to the general public and to start the Opposition period. After that, the BTPO will examine the trademark application for its acceptance or rejection, including the analysis of eventual oppositions filed.

The manifestation against the opposition is not mandatory in Brazil, however it is the chance to provide comments against the third party’s arguments. The deadline to file a manifestation is 60 days after the opposition is officially published.

Also, Article 217 of Brazilian IP Law provides that “A person domiciled abroad must maintain permanently a duly qualified representative resident in the country, with powers to represent him administratively and judicially, including for receiving the summons“. However, according to Madrid Protocol rules and Brazilian PTO position, it is not mandatory/compulsory to designate a Brazilian representative in all WIPO registrations designating Brazil. A local Representative will be only mandatory for performing services such as oppositions, manifestations, responses to office actions, appeals, etc.

Since Brazilian Courts did not issue any opinion regarding this matter yet, this issue may be a problem in the future, bringing a “legal uncertainty” to the foreign applicants.

Different than most members countries of Madrid Protocol, Brazilian PTO will inform WIPO about the Declaration of Grant with a notification for payment of second part fees indicating that the applicant should pay the allowance fees. If that payment is not performed in due time (or if an appeal against a refusal is not filed), the trademark will be considered definitively abandoned in the country.

This being said, we strongly recommend appointing a Brazilian representative in WIPO registrations designating Brazil, since a Brazilian IP Professional may monitor the Official Gazette (RPI) accordingly and provide you all the notices published by BPTO, which will ensure an active defense of the Brazilian designations.

Contact CNV IP Law Firm for more information about this matter and avoid that any potential correspondence is missed.