The Madrid Protocol in Latin America, particularly in Brazil and Chile
By Raquel Flanzbaum.
In the framework of the recent Annual Meeting of the International Trademark Association (INTA), held in Singapore from May 16 to May 20, 2023, I moderated a table topic on the Madrid Protocol in Latin America and, specifically, about the situation of this treaty in Brazil and Chile, which are the most recent adherents in the region.
First, the attendees showed great interest in knowing how the system works in Brazil, as most trademark owners, particularly European firms, designate Brazil.
The debate about the arguments usually made regarding the unconstitutionality of this or that rule of the Madrid Protocol – or lack thereof– vis-a-vis national or regional norms was very interesting. For example:
As trademark applicants filing in Brazil through the Protocol are not expressly required to designate a local representative, there would be a difference vis-à-vis the local applicants, where such designation is necessary, so this could give rise to a legal/constitutional issue.
We discussed the above in detail, and drew two conclusions:
- Since the Protocol is not a substantive law, and invariably the national law must be applied, in this case that of Brazil, a possible claim of unconstitutionality due to unequal treatment of national applicants v. foreigners should not be insurmountable; and
- Absolutely always, every time Brazil (or, strictly speaking, any other country) is designated, it is highly advisable that the owner hire the professional services of a local lawyer or agent, specialized in IP, to monitor that specific designation, precisely to avoid future problems if the foreign owner is later sued for invalidity of the international registration.
We mention below another statement/comment that is usually made:
Local law requires a legitimate interest for the registration of trademarks, whereas this requirement does not exist in the Protocol, and thus this may give rise to legal challenges for differences in national treatment.
We come to the same conclusion as above: since the Madrid Protocol is not a substantive law, clearly the national rules must be applied to all applicants, regardless of whether they are nationals or foreigners, and we therefore do not believe that the constitutional issue, if it is raised, will be admitted.
As regards other topics concerning the implementation of the Madrid Protocol in Brazil, we commented on the multi-class system since, precisely, as the multi-class system is not yet in force in that country, an obstacle in one class would prevent the other classes from issuing to registration until that problem is solved, which can take years (as for example office actions, oppositions, rejections, in part of the classes).
And, how will the applicant know and handle these obstacles in absence of a Brazilian counsel? Here again we draw attention to the advisability and importance of always appointing a local representative of the holder in all designated countries.
We also discussed another statement/comment that is often made:
As the Brazilian IP Law requires that all applicants be lawfully engaged in activities related to the goods and services claimed by the applications, as this is not a requirement of the Madrid System, it could also lead to a claim of unconstitutionality.
We are not specifically aware of such a legal issue having been raised and believe, as noted above, that it should be resolved in favor of the application of the Protocol.
To finalize the Brazilian chapter, we mentioned the practical issues which involve the Portuguese language, as the Portuguese translations of the specification of goods and services in international applications are carried out by the Brazilian Office, which may cause questions of interpretation, not only for examination purposes but also for enforcement purposes.
Finally, we did not extend ourselves with regard to Chile, as the Protocol has only just become operative there, and we agreed on a wait-and-see approach for the time being while the local TMO familiarizes itself with the new system.
In closing, we can summarize the debate as follows:
- Whatever the country, it is always advisable to hire a local lawyer to monitor the designations of the holder, during the administrative procedure and after it; and
- As the “national phase” is prosecuted under the laws of each country (or the regional laws), the Madrid System does not override them. It precisely facilitates multijurisdictional protection but always applying the substantive provisions of each country.
Clearly for large companies the protection via the Madrid Protocol is of great interest because it lowers costs, but it is also true that the accession of several important countries in the region is still lacking, so it will be necessary to continue expanding the system to other jurisdictions, as well as to improve it constantly in the countries that have already joined the system.
For further information please contact: rflanzbaum@ojambf.com.
