As soon as Brazil announced its intentions of joining the Madrid Protocol many questions arise. What would be the implication for Trademarks applicants and representatives?
One question and maybe the most important at this moment and which it is not yet definitely solved, concerns the obligation of a local representative, meaning a local registered lawyer, for the application. Despite the contradiction between the regulation of the Protocol to which Brazil is joining and the Brazilian Intellectual Property Law, this one added to the lobby of the Brazilian Bar Association and Intellectual Property Professionals, the matter is still to be decided.
Facing this impasse, it becomes vital to expedite and precise the Trademarks search before the application. Currently, the search through the system of the World Intellectual Property Organization (WIPO) is not accurate with respect to the Brazilian database and an effective and detailed search can only be carried out by qualified professionals in Brazil with complete access to the national database and information.
Once an exact search has been conducted it will be possible to guarantee the success of a new Trademark registration avoiding a costly and time-consuming subsequent procedure of …Read More
Through the Madrid Protocol any national from a signatory country can file a trademark application through the World IP Office designating one or various other signatory countries, obtaining the registration of their mark in several countries with just one application. This saves time and money for the applicant.
In Latin America, Brazil, Colombia, Cuba and Mexico are signatories of the Madrid Protocol. Brazil will start implementing the Protocol in October 2019, and it will be possible to designate this country through WIPO.
However, this poses some risks. Most times, the application is filed designating several countries without the recommended prior registrability and availability search reports, increasing the risks of provisional refusals from the national trademark offices.
When an applicant designates a country, a formal study of the mark is conducted, and sent to each of the national trademark offices designated, who also study the application. The national examination studies the intrinsic registrability of a mark, as well as the prior marks, in search for any absolute or relative grounds for rejection.
In case any are found, a provisional refusal is issued and served to the applicant through WIPO, and given a term to …Read More