Newsletter Edition 22 - February 2021


Judicial summons of foreigners without letters rogatory

On January 29th, the participants of the webinar “The Madrid Protocol and the judicial summons of a foreign owner by mail in light of the recent STF judgment” pointed out that, despite the STF (Federal Supreme Court) having confirmed the decision of the STJ (Superior Court of Justice) in civil and commercial matters for the validity of the summons of the parties and ratification of a foreign sentence by mail without the need for a letter rogatory, the adequacy of this procedure under the Madrid Protocol is more complex and requires a set of solutions. The event promoted by ABPI brought together for the debate Marcos Silva Couto, the BPTO’s (Brazilian Patent and Trademark Office) Chief Prosecutor, José Graça Aranha, regional director of WIPO (World Intellectual Property Organization), and Marcelo Mazzola, the deputy director of ABPI, and was moderated by ABPI’s president Luiz Edgard Montaury Pimenta.

Trademark registrations in Brazil directly from abroad via the Madrid Protocol do not require the constitution of a local attorney, in non-compliance with Article 217 of Law 9.279/1996 (Industrial Property Law – IPL), which establishes that an individual or legal entity domiciled abroad must appoint a qualified attorney domiciled in Brazil to represent it administratively and judicially, including to receive the summons. Such a requirement can make lawsuits extremely time-consuming and costly, as they depend on a letter rogatory for judicial summons.

The debaters agreed that an amendment to Brazilian legislation to adapt to the Madrid Protocol rules, eliminating the requirement of Article 217, would be complex and time-consuming. “The legislative change is a painful path, takes a long time, and it is not known how the final text can look”, stated Silva Couto. “We must not seek a single solution, but a range of alternatives”. In the same way, it would be inadvisable to seek, on the contrary, that the international treaties that regulate the matter conform to Brazilian laws. “Modifying an international treaty is complicated. The Madrid Protocol has 123 countries, covering 83% of world trade, one can wonder what would happen if it was to be adjusted to the laws of all member countries”, said Graça Aranha.

In his presentation, Mazzola observed that, recently, in litigation involving a Brazilian and a foreign company, the STJ and STF understood that the parties should be summoned by mail, without the need for a letter rogatory. The STJ’s decision was based on the contract signed between the two companies, with jurisdiction in New York, which allows mail summons. Based on this understanding, the Second Panel of the Federal Supreme Court – STF dismissed the appeal in an extraordinary appeal (nº 1,137,224) that questioned the STJ’s judgment.

ABPI’s President noted that the Letter Rogatory is an onerous, bureaucratic, and time-consuming procedure. He suggested including an option to the applicant for judicial summon by mail in the trademark filing form via the Madrid Protocol. Graça Aranha assured the audience that he is dealing with the matter with the WIPO. “I guarantee that we are working on this alternative”, he said, but considered: “We need to improve the business environment in Brazil”.

 The full webinar can be accessed on ABPI’s channel on YouTube.