Newsletter Edition 08 - November 2019


The harmony between the Madrid Protocol and the IP law

Harmonizing the terms of the Madrid Protocol, the international trademark registration treaty, to which Brazil adhered in July this year, with the Brazilian Industrial Property Law (Law 9.279/96) has been a major challenge for the BPTO, the entity responsible for the operationalization of the agreement in the country. “Whenever possible, we have tried to follow our legislation”, said the BPTO’s Madrid Protocol Project Manager, Maria Eugênia Gallotti, in a speech in early November during the XIII Congress of Copyright and Public Interest – CODAIP, in Curitiba (PR), supported by ABPI. She gave as examples Art. 128, which deals with the declaration of activity and Art. 135, regarding the filing of records or cancellation of applications in the context of the assignment notations.

However, not everything can be harmonized. Setting aside Art. 217, which deals with the requirement to remain a duly qualified attorney domiciled in the country, with powers to represent the holder of the administrative and judicial rights. The requirement, which continues to apply for the registration of trademarks nationally, would not be included in the terms of the Protocol, according to the representative of the BPTO. “We have studied several countries where the same issue exists and, in our case, it is being addressed by the Ministry of Economy”, explains Maria Eugênia, adding that, on the other hand, not requiring an attorney represents a reduction in the registration costs of a brand.

Minimize risks

In her lecture “Madrid Protocol in Practice: The Lawyer’s Role as a Strategic Partner in Trademark Management”, lawyer Rafael Atab de Araujo, co-coordinator of ABPI’s Trademarks Study Committee, considered that “some Protocol issues, both practical and legal, are open and shall have to be answered and built”. He noted that the Treaty is a procedural agreement, “it does not change the substantive law of countries”, which has to be respected. For him, the local attorney, in addition to legal representation, assists in the strategy of entering trademarks, products and services of the company, minimizing risks.

Approved by the Senate in June this year through Legislative Decree 49/19 Brazil’s accession to the Madrid Protocol came into force on October 2nd. “To adjust to the terms of the agreement, the new management of the BPTO, which took over at the beginning of the year, created the Madrid Team, of which Maria Eugênia is a member”.

Generally, the Project manager explained, this compliance with the Protocol consists of reducing exam time, assessing human resources impact, training, developing IT systems, writing new procedures and regulatory acts.

Maria Eugênia highlighted that, among the many advantages of the Protocol, of which Brazil is a signatory alongside 105 members, covering a total of 122 countries, are the reduction of costs and the speed and predictability of exam times. Nevertheless, she noted that compared to the traditional trademark filing system, the option for the Protocol is not always worthwhile, and in this case, it is good to do the math. “The protocol route is an option, but it is not for everyone. Each company has to assess whether it is worthwhile”, she recommended.

The panel and mini-course on the Madrid Protocol, held during the 13th Congress of Copyright and Public Interest – CODAIP, were organized by the Paraná sectional representative, Maria Inez Araujo de Abreu, who composed the Opening Table with other authorities.