Nordic-Light-Jun2014-Aug2014

The Madrid Protocol:
where does Brazil stand
By Andréia de Andrade Gomes*
and José Graça Aranha**
José Graça Aranha
Andréia de
Andrade Gomes
The Madrid Protocol, created to simplify the
international trademark registration system
and reduce the cost and the time it takes
to obtain trademark registrations in other
countries, is still under discussion in Brazil.
Since 2001, Brazil has been analyzing
the advantages and disadvantages of a possible
accession to the system. The National Institute of
Industrial Property (INPI) defends the accession, with
the argument that there would be a significant reduction
in both time and expenses to obtain trademark
registrations in the international market to protect
such registration in all Protocol member countries.
The National Confederation of Industries (CNI),
the São Paulo State Federation of Industries (Fiesp)
and the Rio de Janeiro State Federation of Industries
(Firjan) have also supported the Protocol. In the
current system, several procedures are required for a
national company to register a trademark overseas,
or for a foreign company to register a trademark in
Brazil. This is an extensive list and the requirements
may change from country to country. The cost and
time necessary may represent additional obstacles
to obtaining registrations in more countries.
The Madrid Protocol reduces most of these
requirements and condenses them into a single
international filing, with effect in up to 91
countries, including almost all of Brazil’s largest
business partners.
We cannot fear the Protocol. If Brazil
becomes a member of the Protocol, the
procedures such as filling in forms may suffer a
significant reduction, but the technical and legal
work that follows the filing of a trademark application
will not only increase due to the new
trademarks that will come to Brazil, but also
remain fundamental to protect these intangible
assets of the trademark owners– who
are the main beneficiaries of the system.
In our current trademark registration
system, a series of bureaucratic
steps must be faced before a national company
may register a trademark abroad or before a foreign
company may register a trademark in Brazil.
An argument against Brazil’s accession to the
Madrid Protocol is that foreign trademarks will
flood INPI with many new trademark applications.
This is a mistake. Data of the World Intellectual
Property Organization (WIPO) shows that Brazil
is estimated to receive 3,000 to 4,000 trademark
applications in the first years after accession to
the Protocol. These numbers represent less than 3
percent of the current annual filings in Brazil.
A total of 91 countries are a party to the Madrid
Protocol, including all European countries, the United
States, a few African and Arab countries, Japan,
Australia, China, North and South Korea, Singapore,
Cuba, the Philippines, Israel, India and New Zealand.
Only the Americas do not have an expressive number
of countries party to the Madrid Protocol: Only Colombia,
Mexico, Cuba and Antigua and Barbuda.
Brazil’s accession to the international treaty
should increase the number of Brazilian trademarks
protected overseas. We are aware that foreign
companies that are installed in Brazil protect their
trademarks regardless of cost, unlike the small and
medium-sized Brazilian export companies that are
frequently unable to do so in foreign countries due
to the expensive registration cost.
To remain discussing this issue for years and
years would be a missed opportunity to increase our
exports and improve Brazil’s international image,
and we trust that the Brazilian government will
recognize the significance of the trademark registration,
by shortly announcing the country’s accession
to the Madrid Protocol.
*Andréia de Andrade Gomes is a Partner in
the Intellectual Property area at TozziniFreire
Advogados
**José Graça Aranha is the Former President of
the National Institute of Industrial Property (INPI)
44 JUNE - AUGUST 2014