Latest developments in the implementation of the Madrid Protocol in Brazil and Chile
In INTA’s recent annual meeting held in Atlanta, Georgia, from May 18 to May 22, 2024, I moderated a table topic on the implementation of the Madrid Protocol in Latin America, specifically in Brazil and Chile, the most recent adherents in the region.
We began pointing out that the Madrid Protocol is an international treaty administered by the World Intellectual Property Organization (WIPO), which facilitates the registration of trademarks in those jurisdictions that are part of the treaty. Accordingly, in Latin America we need to become thoroughly familiar with the Madrid Protocol and its effects, since Colombia, Mexico, Brazil and now Chile are already part of it and apply it.
Today, 114 members are part of the Madrid system, which includes countries and intergovernmental organizations such as the OAPI and the European Union. This number is considered to represent approximately 80% of world trade.
We analyzed the official fees to be paid in each of the designated countries:
Assume, for example, an international application is filed in the US and designates Colombia, Brazil, Mexico and Chile (situation as of March 4, 2024):
A basic fee of 653 Swiss francs is paid (it can be more if you claim color), and neither the complementary fee (100 Swiss francs for each designated part) nor the supplementary fee (100 Swiss francs for each class of products/services as of 3 onwards) are paid, because these countries chose to pay what is called the individual fee, which replaces the others.
Therefore, if Brazil is designated, individual fees are paid in two parts: the first is 75 Swiss francs for each class and the second part is 135 Swiss francs for each class. The first part of the individual fee is paid at the time of submitting the international application and the second part is paid when what we call the “national phase” begins.
If Chile is designated, 251 Swiss francs are paid for each class.
If Colombia is designated, 274 Swiss francs are paid for one class and 137 for each additional class.
If Mexico is designated, it is 132 Swiss francs for each class of products or services.
(One Swiss franc is equal to approximately U.S. $1,11)
We then went on with the so called “national phase”, which is the prosecution in each designated country according to its national law.
We discussed the constitutionality of the Madrid Protocol, as well as some practical issues regarding its implementation in Latin America, and drew two conclusions:
1) since the Protocol is not a substantive law and the national law must invariably be applied, a possible claim of unconstitutionality due to unequal treatment of nationals with respect to foreigners should not be insurmountable; and
2) always, absolutely always, every time any country is designated, it is highly advisable that local counsel be retained to monitor the subsequent prosecution of the
application and avoid future problems if the foreign registrant is later sued for cancellation or expiration of the international registration.
Turning to more specific issues in Brazil, we commented on the multi-class system since, precisely, as it is not yet in force in that country, an obstacle in one class will prevent the other classes from issuing to registration until that obstacle is overcome, which can take years.
We pointed out that there are many doubts related to how the PTO will handle multi class applications that come via the Madrid Protocol, especially when there are issues (office actions, oppositions, rejections, etc.) in some of the classes.
And if there are office actions, oppositions, rejections, etc. in some of the classes, not in all of them, how will the applicant know this in absence of a Brazilian counsel?
We also commented on the Portuguese language, as Portuguese translations of descriptions of goods and services in international applications are carried out by the Brazilian Office, which may cause questions of interpretation, not only for examination but also for enforcement purposes.
Turning to Chile, we commented that in 2023 the number of times in which this country has been designated was much higher than Chilean international applications elsewhere (i.e., Chilean companies that designated third countries, mostly USA, Colombia, Mexico, Brazil and Canada). This was clearly due to the trade balance of Latin America, which imports much more than it exports.
With regard to the Latin American countries that are not yet part of the Madrid Protocol, we commented that some signals have been detected in Peru in 2023, with the aim to support this country in its preparation for entry into the Protocol.
Specifically, representatives from Peru visited the EUIPO (the European Union Intellectual Property Office) and the Spanish Patent and Trademark Office in September 2023, as part of a project organized by IP Key Latin America, funded by the European Union and with the collaboration of WIPO, of course.
The IP Key Latin America project provides support to increase IP enforcement and protection throughout the Latin American region, and supports international companies, especially EU companies operating in the region.
We will see what happens in 2024.
In closing, we can say that clearly for large companies, protection via the Madrid Protocol is of great interest because it lowers costs, but it is also true that many practical issues still need to be resolved, such as those mentioned about Brazil.
In short, there is much to resolve and much to do, but integration is the key to development in globalized times, and the consolidation of industrial property constitutes an important factor in this process.
The Madrid Protocol is inevitably integrated into this scenario.
For further information please contact rflanzbaum@ojambf.com
