Madrid Protocol: the International Trademark Registration System becomes effective in Brazil

On October 2nd, 2019 the Madrid Protocol, a treaty establishing an international trademark system administered by the World Intellectual Property Organization (WIPO), became effective in Brazil.

Madrid Protocol: origin

Effective since 1996, the treaty has about 100 signatory countries, which together account for over 80% of the world trade. Through this protocol, the holder of a registration application or trademark registration may apply for the protection of a new registration application at the same time and for several territories using the benefit of filing all under a unified application.

Brazil in the Madrid Protocol

With Brazil’s entry into the system, many changes were expected, both structurally — resulting in the reorganization of the National Institute of Intellectual Property (INPI) to conform to the Protocol — and behaviorally (for society).

For Paulo Brancher, partner of Intellectual Property , the Madrid Protocol has consolidated Brazil’s position as a key country in the global protection of trademarks, as well as providing an incentive for Brazilian companies wishing to internationalize their brands.

The main benefits brought to national companies by the Madrid protocol are:

– Application for trademark registration in several countries simultaneously;

– Simplified registration through a single process in a single language;

– Greater predictability of response time: requests must be reviewed within 18 months;

– A single extension date for trademark registrations

– Payment of fees in only one currency (Swiss franc)

Innovations: joint ownership and multiclass records

Among the innovations introduced by the Madrid Protocol to the Brazilian system, two stand out the most: the commonality and the multiclass registration, which took effect on October 2nd, 2019.

The commonality is the possibility of a brand having more than one owner, which was not possible until then by the rules of the INPI. The means to instrumentalize this opening were regulated by Resolution INPI / PR 245/2019 , issued on August 27th, 2019.

The multiclass registration, instituted by Resolution INPI / PR No. 248/2019 of September 9, 2019, allows an order or registration to fit simultaneously into several classes or products of services.