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Brazil to Join Madrid Protocol (But Not Before Mid-2018)

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Following in the footsteps of a number of other South American countries, Brazil has confirmed its intention to join the Madrid Protocol. The announcement was made by the Brazilian Minister of Industry, Foreign Trade and Services, Marcos Periera, during a November 23, 2016 meeting with WIPO Director General Francis Gurry. While this is a positive and substantial development, it is anticipated that Brazil will not be in a position to join the Madrid Protocol before mid-2018 at the earliest. The delay is undoubtedly due to the numerous challenges that will need to be negotiated when integrating the Madrid Protocol requirements with local Brazilian PTO practice including the following:

  • The Madrid Protocol requires action on trademark applications within 18 months but the Brazilian PTO currently takes approximately 4 years to publish applications after filing.
  • There is a huge backlog at the Brazilian PTO, which could complicate issues stemming from adherence to the 5-year dependency period.
  • The official languages accepted by the Madrid Protocol system are English, French, and Spanish and the Brazilian PTO requires all official communications be filed in Portuguese. The Brazilian PTO would need to commit significant additional resources to handle the large volume of translations associated with Madrid Protocol filings.
  • Multiclass applications are currently not permitted under Brazil's system.

As with Canada, the devil will be in working out the details of the implementing legislation to make it possible– but it is promising the Brazilian government has at least affirmed its commitment to attempt to make the changes required to join the Madrid Protocol.

For more information on international trademark filings under the Madrid Protocol, click here.

The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.