Two important news last week regarding Industrial Property – Highly Renowned Trademark and Madrid Protocol

The first of these refers to the recent approval in the Federal Senate on April 2, 2019, of the Bill 86/2015 that creates rules for special protection of Highly Renowned Trademarks.

Currently, only one internal rule of the Brazilian Patent and Trademark Office (BPTO) deals with this matter (Resolution No. 172 of 2016), since the Industrial Property Law (Law 9.279 / 96) in its article 125 is silent in several respects, limited to defining that “the trademark in Brazil considered of Highly Renowned will be guaranteed special protection in all branches of activity.” Bill 86/2015 specifies that Highly Renowned may be requested at any time, which is not typified in Law 9.279 / 96.

Bill 86/2015, which will still be returned to the Chamber of Deputies, also determines that, in case of approval of the “Highly Renowned” request, the recognition of its ” Highly Renowned ” will be noted in the trademark registration. Thus, the trademark owner will have a document proving their right to special protection. Currently there is a list of trademarks considered of Highly Renowned” by the BPTO.

The granting of such status may be contested by third parties with legitimate interest. As for validity, recognition of the high renown will have a validity term of 10 years, and its renewal will be instructed with recent data that justify the maintenance of such status.

These changes will certainly facilitate the application and processing of the recognition of a Highly Renowned Trademark. The law resulting from the project will come into force on the date of its publication.

The second, extremely relevant and awaited news, refers to the approval in the Plenary of the Chamber, on April 4, 2019, of the text of the Madrid Protocol, which deals with registration of trademarks. After approval in the Plenary of the Chamber, the text now goes to the Federal Senate.

The Madrid Protocol allows the protection of a trademark simultaneously in all the countries that are part of the agreement (PDC 860/17). The BPTO will forward the trademark application to the World Intellectual Property Organization (WIPO), based in Geneva, and will be responsible for the process in the other member countries. It is important to note, however, that as regards the examination of the applications received by the required national offices, the decision-making sovereignty of each local office will be maintained according to the rites and laws of each country.

As great advantages of the protocol, we can mention: (i) a maximum period of 18 months for the analysis of trademark registrability; (ii) a significant reduction in the cost of companies, which today, in order to protect their brands in different jurisdictions, have to deal with different offices, pay various fees, and others; (iii) increasing the competitiveness of national companies; and (iv) de-bureaucratization of the process of protection in the member countries.

The Madrid Protocol has been in force since April 1996 in the European Union, Japan, Australia, Russia, China, and the United States, among others.

In Brazil, the BPTO is already preparing for the possible adhesion, working in a way to reduce the time of analysis of the trademarks and adequacy to the infrastructure of information technology.