Practical aspects of the Madrid Protocol in Brazil

Practical aspects of the Madrid Protocol in Brazil as of May 12, 2020, the Brazilian Patent and Trademark Office (BPTO) started publishing the designations received through the Madrid Protocol. These were the first publications since its adoption in October 2019.

A few concerns have arisen regarding the need to appoint a local counsel up to the point where registration of the mark is granted by the BPTO.

Is it mandatory to appoint a local counsel in Brazil for designations made through the Madrid Protocol?

No, it is not mandatory, at least to proceed with the designations before WIPO.

When is it mandatory to appoint a local counsel in Brazil for designations made through the Madrid Protocol?

Whenever needed to act before the BPTO (and not before WIPO), and once the corresponding registration is granted in Brazil. Such local counsel should have the power to receive judicial summons on registrant's behalf.

Therefore, if the prosecution occurs without any oppositions/office actions/rejections along the way, the applicant does not need to appoint local counsel and the application will mature into registration without the need for local representation.

Is it recommended to appoint a local counsel in Brazil for designations made through the Madrid Protocol? Why?

Yes, we do strongly recommend appointing a local counsel to monitor the international application in order to avoid missing any relevant publication and deadlines.

In Brazil, provisional refusals, such as rejecting decisions, office actions and oppositions, are not notified to the applicant, but simply published in the Brazilian Official Gazette, and this is the same for applications filed through the Madrid Protocol.

Since the BPTO and the WIPO systems are not integrated, this information will, at first, only be displayed at the Brazilian Trademark Office's database.

The BPTO indeed offers an e-mail alert system to notify the applicant of the existence of a publication, a service that will be extended to international applicants in English and Spanish.

Nonetheless, the BPTO's publications are quite simple and do not provide extensive data to the applicants.

It is important to note that the lack of a timely response to office actions/rejections will result in the abandonment of the application in Brazil.

Final remarks

Brazilian trademark law makes it mandatory to have a local representative once registration is granted, with powers to receive judicial summons.

In view of the above, it is strongly advisable to have local counsel following the proceedings of the application, so as to avoid missing any publications / deadlines.

In other words, the only situation that a local representative is not required, is when the application runs smoothly from filing to registration, but once registration is granted, it is mandatory to appoint a local counsel.

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Lexology. 

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*Luana Muniz de Barros é sócia da banca Montaury Pimenta, Machado & Vieira de Mello Advogados.