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Despite the STF (Supreme Federal 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 post, without the need for a rogatory letter, the adequacy of this procedure under the Madrid Protocol is more complex and requires a set of solutions, pointed out on Friday, 29, participants in the webinar “Madrid Protocol and the judicial summons of a foreign holder by post in the light of the recent judgment of the FTS ”. The event, promoted by ABPI – Brazilian Association of Intellectual Property, brought together in debate the chief attorney of the INPI (National Institute of Industrial Property), Marcos Silva Couto, the regional director of WIPO (World Intellectual Property Organization), José Graça Aranha , and ABPI’s deputy director, Marcelo Mazzola, under the moderation of ABPI’s president, Luiz Edgard Montaury Pimenta.

Trademark registrations in Brazil directly from abroad via the Madrid Protocol do not require the constitution of the local attorney, which goes against Art. 217 of Law 9.279 / 1996 (Industrial Property Law – LPI), which establishes that a natural or legal person domiciled abroad shall appoint a qualified attorney and domiciled in the country to represent it administratively and judicially, including to receive citations. Such a requirement can make lawsuits extremely time consuming and costly, as they depend on a rogatory letter for judicial summons.

The panelists agreed that an amendment to Brazilian law 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,” said Silva Couto. “We should 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, covers 83% of world trade and imagine if it were adjusted to the laws of all member countries ”, said Graça Aranha.

Mazzola, in his presentation, observed that, recently, in litigation involving a Brazilian and a foreign company, the STJ and STF understood that the parties should be served by post, 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 postal service. Based on this understanding, the 2nd group of the Supreme Federal Court – STF dismissed the interlocutory appeal in an extraordinary appeal (nº 1,137,224) that questioned the STJ ruling.

The President of ABPI noted that the Rogatory Letter is an onerous, bureaucratic and time-consuming procedure. He suggested including an option by the applicant for judicial service by post in the trademark filing form via the Madrid Protocol. Graça Aranha assured that she is dealing with the matter with the WIPO. “I guarantee that we are working on this alternative”, he said, but he obtained: “We need to improve the business environment in Brazil, as the world does not have to adapt to our jabuticaba. We have to adapt to the world ”.

The complete Webinar can be followed by the ABPI YouTube channel