Tim Lince

The Brazilian government has confirmed that it intends to join the international trademark system by mid-2018. While the country’s move towards the Madrid Protocol will be seen as positive by the World Intellectual Property Organisation (WIPO), one expert argues that the country’s trademark office is far from ready – even claiming that its progress could be stifled as a result of Madrid.

The announcement came last Thursday at a meeting between WIPO director general Francis Gurry and Brazil's minister of industry, foreign trade and services, Marcos Pereira. The discussion between the two focused on WIPO supporting automation in Brazil’s IP office and working together on further IP education programs. However, the minister signalling his intent that Brazil will look to join the Madrid System by mid-2018 is the headline-grabber.

Gurry, unsurprisingly, saw this as a major win, describing it as a “wonderful development”, and further commenting: “Brazil is a major trading country in Latin America and beyond, so its intention to join the Madrid System is welcome news for both export-oriented Brazilian companies and foreign trademark owners wishing to do business in this dynamic market.”

For WIPO, the move is a significant one. In a World Trademark Review feature last year,  Montevideo-based IP attorney Mark Teuten of Cervieri Monsuarez & Associates said there would “definitely be a domino effect, for Uruguay and the rest of the region” if Brazil was to join Madrid. In the same piece, David Muls, WIPO’s senior director of the Madrid Registry, acknowledged the ‘domino effect’ that Brazil could set in motion, and was confident that things would move forward in the region: “The Madrid Protocol is on the agenda of several governments in Latin America,” he stated at the time. “The question is how quickly the agenda will move forward.”

A little over a year later and it seems the agenda is moving ahead at a rapid pace. However, there is significant concern from some practitioners in the country over the Brazilian trademark office’s readiness for Madrid. The current president of the Association of Brazilian IP Agents (ABAPI), Ricardo Pinho, told World Trademark Review the  primary reason is that applicants often face a multi-year wait to get a trademark through the examination process. “The Brazilian trademark office has a huge backlog on the trademark side. Recently filed trademark applications take from two to three years to be examined and mature into registration, when everything goes smoothly: ie, no office action issued, no oppositions filed against it and no other ‘incidents’. But it takes at least four years for an opposition to be decided and seven to eight years for an appeal against the rejection of a trademark application to be decided. Therefore, currently – in the near future, at least – it is very unlikely that the Brazilian trademark office will be able to comply with the 18 month term required by the Madrid Protocol.”

Beyond staffing up, one would expect a trademark office readying itself for the implementation of Madrid to be incentivised to improve its internal processes. However, Pinho fears that the changes could result in progress shifting backwards. “I frankly believe it would make things worse, mainly because the Brazilian PTO will not be able to attack and tackle the existing backlog while receiving more work and having to cope with the new multilingual procedures that will be brought by the Madrid Protocol rule. For instance, Brazil does not even adopt the multi-class application/registration system and currently deals with an old Brazilian national classification and the international classification.”

Urgent improvements are needed to improve the current system (let alone to deal with new requirements arising from implementing Madrid), Pinho adds. This includes investing in new IT equipment and infrastructure, which he contends are years behind more modern systems utilised in other IP offices. Yet investment is itself a challenge. “Brazil is struggling with an unexpected economic crisis and this is no different in relation to the federal government, to which the Brazilian trademark office is subordinated,” he explains. “Therefore, unless things change drastically in the next two years (which is very unlikely), there will no room for federal investment in the Brazilian trademark office and the problems are expected to increase. Also, 2018 is an electoral year (both the presidential election, and the renewal of the federal congress and state houses) and politicians will be much more concerned with their own re-elections [than directing efforts towards the IP office].”

In response, WIPO was quietly confident that many of these hurdles could be overcome. Talking to World Trademark Review (but preferring not to be directly quoted), a spokesperson said it was important to remember that the 18 month requirement is for the first office action (and not for full registration). Therefore, at its current two to three year timescale, the Brazil trademark office is not far off achieving that. Ultimately, there was the feeling that many of the concerns stemmed from worry on the part of local IP practitioners that Madrid will lead to a loss of trademark work (something that is not unique to Brazil).

However, Pinho dismisses this assertion. “There is this incorrect view that IP practitioners (who are not in-house) are naturally against the Madrid Protocol because ‘it would take the work away’,” he retorts. “This is not true, and Brazilian practitioners and IP firms have been preparing themselves for the Madrid Protocol for many years now. The fact is that we are not in favour of adoption until the situation at the Brazilian trademark office improves; specifically when the backlog is eliminated or lowered to a ‘tolerable’ level. Adopting it without reasonable conditions will bring new problems, such as discrediting the trademark system, especially in relation to enforcement, as local courts may believe that trademark registrations are granted on a precarious basis – with no substantial examination but merely to avoid lapse of the 18 month term. While this opinion may not reflect the opinion of the entire trademark practitioner community in Brazil, I know it represents the opinion of its vast majority.”

It appears, then, that substantial challenges face the Brazilian trademark office. Key to whether it will achieve its goal of effectively implementing the Madrid System will be investment and, perhaps, buy-in from associations like the ABAPI. Time will tell whether all of these hurdles will be overcome. But if they are, the rest of Latin America could soon follow – and the most significant gap on the Madrid Protocol map (see page 10 of its yearly review) will finally be filled in.

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