The Madrid Agreement of 1981 and the Madrid Protocol of 1989 are the legal bases of the current international trademark registration system operated by the World Intellectual Property Organization (WIPO). This system was designed to simplify, cheapen and accelerate the process of trademark registration in the various signatory countries – which are now more than 120 – simultaneously.

Applications for registration are filed at the regional or national office of the signatory country (in the case of Brazil, the PTO), which holds the conference of documents submitted by the applicants. The application is then sent to the WiPO International Secretariat, which decides on the conformity of the application. If confirmed, the application becomes an international application and is sent to the signatory countries selected by the applicant for the application to be reviewed on the basis of the local legislation of each country.

The Madrid Protocol entered into force in Brazil in October 2019. One year after the beginning of its validity, 109 international trademark applications were registered made by Brazilian users and 7,896 requests made abroad and received by the PTO for compliance analysis. Currently, the members and signatory countries of the Madrid Protocol represent more than 80% of global trade (to learn more about the Treaty of Madrid, click here).

Federal Deputies Julio Lopes (PP/RJ) and Paulo Abi-Ackel (PSDB/MG) presented Bill No. 10,920/18, with the aim of amending Law No. 9,279/96 (Industrial Property Law, LPI) to reduce bureaucracy and give isonomic treatment to nationals and foreigners, in view of Brazil's then imminent agreement to the Madrid Protocol.

On June 17, the plenary of the House of Representatives approved Urgent Request No. 1,325/21 presented by Deputy Efraim Filho (DEM/PB) to expedite the processing of the bill, which has already been analyzed by the Commission for Economic Development, Industry, Trade and Services (CDEICS) and should now proceed to analysis by the Constitution and Justice and Citizenship Commission (CCJC).

The purpose of this article is to present the main changes in the LPI suggested by the deputies authors of the bill and the suggestions proposed by Deputy Efraim Filho, who was the rapporteur of the opinion on the bill in CDEICS, in addition to evaluating the relevance of the project in the field of intellectual property in Brazil.

Inclusion of Paragraphs 5 and 6 of Art. 128

Pursuant to Paragraph 1 of Article 128 of the LPI, persons under private law may apply for trademark registration only for activities that they perform effectively and lawfully. The exercise of the activities is demonstrated by means of the person's own declaration at the time of the application. The new Paragraph 5 suggests granting a deadline for submitting the "declaration of activity" when it cannot be submitted at the time of filing.

The new Paragraph 6 of Article 128, in turn, expressly intends to include in lpi the possibility of co-ownership of trademarks (provided for in the Madrid Agreement).

In the opinion of the rapporteur, Mr Efraim Filho, the legislative change is unnecessary, because the PTO itself is working to implement these changes internally in the administrative sphere.

Inclusion of Art. 143-A

Article 143 of LPI deals with the expiry of the registration due to the disuse of the mark, that is, the extinction of the trademark registration due to its non-use. The purpose is to prevent the accumulation of trademarks and unused, preventing the competitiveness of the market from becoming more organic. Currently, for the PTO to assess the expiry of a trademark, the application must be made by any person with legitimate interest. The PL includes art. 143-A in LPI to create more hypotheses of extinction of the marks by expiry, requiring the proprietor to submit a declaration of use of the mark during the sixth and tenth year of validity of the registration.

According to the opinion of CDEICS, however, creating this condition would result in another step to be overcome when renewing the marks and another for charging fees, which goes against the very purpose of the bill.

Inclusion of Art. 146-A

This new article would serve to extend the provisions related to the hypotheses of extinction and expiry of trademark registrations to international records derived from the Madrid Protocol.

The Opinion of the CDEICS, however, points out that the Madrid Protocol does not interfere with the causes of extinction and expiry provided by the LPI (there are exceptions for specific cases), which led to the conclusion that there is no need for this legal change.

Amendment of art. 158 (caput) and §§ 1 and 2 and inclusion of §§ 3 and 4

The current article 158 of lpi provides for the publication of applications for registration of trademarks for submission of opposition. The modification suggested by the draft law aims to determine that the application be published in Portuguese. The following paragraphs, in short, provide that, if the application for registration is made in a foreign language, the applicant must provide a simple translation into the Portuguese. For the justification presented, it is not reasonable to impose on the PTO the cost and responsibility of carrying out the translation of foreign applications.

Nevertheless, Mr Efraim Filho understood that, depending on the principle of reciprocity in international relations, the deposit may be made in English, French or Spanish and the PTO will be responsible for the translation into the Portuguese.

Inclusion of §§ 1 and 2 to art. 160

Article 160 of the LPI deals with the examination to be done by the PTO on the granting or rejection of the trademark registration application, after the deadline for submitting opposition to the application for registration. The bill included two paragraphs to Article 160 to provide for the automatic approval of the application for registration if it is not analyzed within 18 months by the PTO counted from the filing of the application.

Paragraph 2 provides that the period of §1 may be reduced if a shorter term is granted to foreigners by means of an international agreement or convention.

The amendment is refuted in the opinion of the CDEICS, for which the average for analysis of applications for registration by the PTO is eight months, and any differences in deadlines between parallel systems and equally accessible to nationals and foreigners do not constitute discriminatory treatment.

Inclusion of the sole paragraph to Art. 217

Article 217 establishes the obligation for the trademark owner in Brazil domiciled abroad to constitute and maintain qualified and domiciled attorney in Brazil, with powers to represent him judicially and administratively, including to receive citations.

While the draft law includes a single paragraph that gives 60 days after filing the application for registration for the foreign applicant to submit to the PTO the power of attorney of his representative in Brazil, the opinion of cdeics understands that such proposition is incompatible with the Madrid Protocol, because the filing of the application for registration is made by the office of the member country (in Brazil , the PTO), and it is unnecessary to maintain a legal representative in the country for which protection is intended.

Nevertheless, it is notorious the difficulty of quoting representatives of foreign trademark holders, which is why Mr Efraim Filho proposed to introduce the sole paragraph to Art. 217 with another wording. The objective is to require the constitution of a prosecutor in Brazil only in cases where there is notification of the PTO on ongoing legal claims, which will lead to the notification of the trademark holder via WIPO, so that she may constitute a proxy in 20 working days.

Repeal of Art. 135

Article 135 states that the assignment of a trademark shall encompass all registrations and requests on behalf of the transferor of the same or similar marks, relating to the same product or service, under penalty of cancellation of registration or filing of the application.

The bill intends to repeal this provision because it believes that, with the accession to the Madrid Protocol, foreigners could perform the assignment of trademark without the restrictions defined in art. 135 and that, because it is a voluntary act, the assignment of the trademark should not be regulated by law, as it is analyzed from the commercial point of view by the parties before it is carried out.

The proposal is rejected by the opinion of the CDEICS, which states that the rule of assignment of trademarks would apply to national and foreign registrations, without distinction, according to the pto.

Conclusion

Brazil's adhering to the Madrid Protocol was a major advance on trademark registrations, facilitating the registration process both by foreign companies wishing to have their trademarks registered in Brazil and by Brazilian companies wishing to obtain registrations abroad.

In principle, the proposed amendments to the LPI do not seem necessary to us in that there is no incompatibility between the provisions of the LPI and the Madrid Protocol, nod.

Below is a complete list of articles with the suggestions proposed by the bill and its CDEICS substitute.