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What I need to know when designating Brazil in an International Trademark Application

25 September 2019
New legislation

A world economy joins the Madrid Protocol that helps owners to protect their trademarks in 121 countries. But what is next?

Here are four key points to consider:

1.- When?

Brazil may be designated in new International Trademark Applications from October 2, 2019.

2.- Subsequent designation of Brazil in existing registrations is not possible

Brazil has made a declaration whereby subsequent designations of the country will not be accepted if the original international registration (the extended registration) was filed before the country signed the Protocol (October 2, 2019). Brazil is consequently joining the countries of Estonia, India, Namibia, Philippines and Turkey which did the same declaration upon accession.

This declaration constitutes an important obstacle for existing holders of International Registrations who cannot simply add Brazil but will have to consider filing a separate International Registration or file an application via the national route.

3) Fees

The fees for designating Brazil will roughly be the same as those charged for national applications. However, as always when using the International system, the applicant can expect savings in attorney fees and a simplified prosecution and subsequent maintenance.

Brazil will charge a second fee upon registration in a similar manner as Japan and Cuba.

4) Licenses and divisional applications

Recording of licenses and requests for the division of the international registration shall have no effect in Brazil and, consequently, such requests shall be recorded in the national Office of Brazil, complying with the formalities required for such recordings by the legislation of Brazil.

Is the Trademark Office prepared?

Brazil has made a declaration whereby the time limit of one year to notify a provisional refusal of protection is replaced by 18 months. Furthermore, a provisional refusal resulting from an opposition may be notified after the expiry of this time limit.

The BPTO is notoriously known for its delays in examining patent and trademark applications, however, during the last couple of years, the BPTO has put a great effort in reducing the backlog on trademark applications and the office is now confident in being able to comply with the time limits established by the Protocol

Join our webinar to know more about Brazil Accession to the Madrid System:

BRAZIL IP TRENDS: THE TWO MAIN HISTORICAL CHANGES NOT TO BE MISSED