Publication of Legislative Decree No. 49 of May 28, 2019 and opening of public consultation on international trademark registration process via Madrid Protocol

Publication of Legislative Decree No. 49 of May 28, 2019 and opening of public consultation on international trademark registration process via Madrid Protocol

The Protocol relating to the Madrid Agreement and the Common Regulations under the Madrid Agreement were approved by the National Congress. The Legislative Decree No. 49 of May 28, 2019 (“Legislative Decree”), originating from Draft Legislative Decree No. 98/2019, was published in the Federal Official Gazette on May 30, 2019.

The Decree contains reservations on the Protocol – as mentioned on previous occasions –, among which the following stand out:

  1. Declaration that the time limit of 12 (twelve) months for the Brazilian Patent and Trademark Office (“BPTO”) to notify a refusal of protection (general rule of the Madrid Protocol) is replaced by 18 (eighteen) months;
  2. Declaration that, under certain circumstances, the time limit for the BPTO to notify of a refusal based on an opposition may surpass 18 (eighteen) months;
  3. Declaration that the protection resulting from any international registration effected under the Protocol before the date of entry into force of the Protocol with respect to Brazil cannot be extended to Brazil; and
  4. Declaration stating that the registration of licenses before the World Intellectual Property Organization (“WIPO”) will not have effect in Brazil, considering that the registration of trademark licenses is already regulated by the national legislation.

Another highlight of the Legislative Decree is the notification that designates Spanish and English as the official languages.

In preparation for the Protocol’s entry into force with respect to Brazil, the BPTO has been discussing, through public consultation, some of the most significant issues in light of the necessary adjustments to be implemented in its procedures in order to adopt the international registration system via the Madrid Protocol. Among the most relevant issues under discussion are:

  1. trademark registration in the multi-class system;
  2. trademark registration under joint ownership;
  3. the possibility of dividing trademark registrations and applications; and, most recently,
  4. international trademark registration under the Madrid Protocol.

For the implementation of adjustments related to each of the above topics, a resolution will be issued by the BPTO regulating each corresponding procedure. The drafting of these resolutions is currently under discussion through public consultation, which has been the subject of previous Legal Updates.

More recently, with the publication of the BPTO Trademark Board’s Resolution No. 05/2019 (“BPTO Resolution”) in the Industrial Property Official Gazette (“RPI”) No. 2525 of May 28, 2019, the BPTO opened a public consultation on the draft of the Resolution that will regulate the international trademark registration procedure under the Madrid Protocol.

Some of the main points of the BPTO Resolution include:

  1. Applications filed with the BPTO under the Protocol (intended for the International Bureau of WIPO), as well as petitions and the corresponding communications, must be written in English or Spanish;
  2. The communications between the International Bureau and the BPTO concerning territorial extensions of the protection to Brazil will be written in English (the list of products and services covered by conflicting prior applications or registrations for the purpose of refusing protection, however, may be sent in Portuguese); while the requirements regarding territorial extensions of the protection to Brazil, when presented directly at the BPTO, must be written in Portuguese; 
  3. When carrying out actions directly at the BPTO, the owner of an international registration domiciled abroad must establish and maintain a suitably qualified attorney domiciled in Brazil, in line with the rule currently in force according to Law 9,279 of 1996 (the Brazilian Industrial Property Law, “LPI”);
  4. The time limits set forth in the Resolution will be calculated from the notification in the official communication medium of the BPTO.

The public consultation period will be open for a period of 30 days, from May 28, 2019 through June 27, 2019.

The Brazilian Association of Industrial Property Agents (“ABAPI”), the Brazilian Intellectual Property Association (“ABPI”) and the São Paulo Intellectual Property Association (“ASPI”) jointly filed a request for extension of the period for the public consultation regarding the BPTO’s draft Resolution on the international trademark registration procedure under the Madrid Protocol.

However, on June 4, 2019, the President of BPTO, Mr. Cláudio Vilar Furtado, rejected the request to extend the term, following the same position as the Director of Trademarks, Industrial Designs and Geographical Indications of the BPTO, who had already expressed his opinion towards the rejection of the request.

The rejection was based on the schedule established between Brazil and WIPO, which cannot be changed. Therefore, the deadline for contributions in public consultation regarding the trademark registration procedure under the Madrid Protocol remains unchanged.

Consequently, the draft of each resolution is open for discussion through public consultations during the following periods:

1. Until June 13, 2019: public consultation on the drafting of the Resolution on trademark registration in the multi-class system, in accordance with BPTO Trademark Board’s Resolution No. 02/2019, published in the BPTO’s Official Gazette No. 2523 of May 14, 2019.

2. Until June 20, 2019: public consultation on the drafting of the Resolutions regarding:

  1. The registration of trademarks under joint ownership, according to BPTO Trademark Board’s Resolution No. 03/2019, published in the BPTO’s Official Gazette No. 2524, dated May 21, 2019; and
  2. The possibility of division of trademark registrations and applications, according to BPTO Trademark Board’s Resolution No. 04/2019, also published in the BPTO’s Official Gazette No. 2524, dated May 21, 2019.

3. Until June 27, 2019: public consultation on the drafting of the Resolution on the registration of trademarks under the Madrid Protocol, in accordance with BPTO Trademark Board’s Resolution No. 05/2019, published in the BPTO’s Official Gazette No. 2525.

When the public consultation periods are over, the BPTO will announce responses to the contributions received, together with the final text of each Resolution.

Our Intellectual Property team is available to provide further information or clarification on this subject.