Trademarks – The Madrid protocol in Latin America: what the present holds for us: Brazil and Chile
By Raquel Flanzbaum.
In the expansion of the Madrid Union in Latin America, there are two milestones: first, the accession of the United States of America, where the Protocol entered into force in 2003, and secondly the adoption of Spanish as a working language, which came into force on April 1st, 2004, as this would make the system more attractive for the Spanish-speaking countries and users.
Therefore, from 2003 onwards, American users of the system have had the opportunity to designate countries belonging to the Madrid Protocol and, at the same time, the users from Spanish-speaking countries that adhered to the system would have an easier way to export their products and services using this tool.
As a consequence of this process, currently these are the Latin American countries members:
- Colombia, which adhered on May 29, 2012 and where the treaty came into force on August 29, 2012;
- Mexico, which joined on November 19, 2012 and where the treaty entered into force on February 19, 2013;
- Brazil, where the Madrid Protocol was approved on July 2, 2019 and took effect on October 2, 2019; and
- More recently, Chile, which adhered on April 4, 2022 and where the system became effective on July 4, 2022.
Cuba is not part of this process because this country had joined long time ago (in 1995), as well as Antigua and Barbuda, where this treaty entered into force on March 17, 2000. Besides, even though Trinidad and Tobago and Jamaica recently adhered (in 2021 and 2022 respectively), given their own history could be considered out of this Latin-American approach.
In this process, we must closely watch Brazil, where the implementation of the Madrid Protocol has brought – and still brings – some difficulties, among which we can mention:
- In the absence of a multiclass system in Brazil, there are many doubts about how the local Trademark Office will resolve the issues that arise, especially when official objections are raised in some of the classes and not in all;
- As trademark applicants filing in Brazil through the Protocol are not expressly required to designate a local representative, there is a difference vis-à-vis the local applicants, where such designation is necessary, so this may give rise to a legal issue that will also have to be resolved.
- In the same vein, 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.
- Portuguese translations of descriptions of goods and services in international applications are carried out by the local Office, which may cause questions of interpretation.
These points are merely illustrative of the issues to be resolved in Brazil regarding the implementation of this treaty.
As for Chile, the system has not been used much since it came into force because only now the necessary changes for its proper operation are being made, so we must wait for it so that users can have a fluid and simple access.
In short, as we have discussed on other occasions, the accession of the United States of America to the international system and the adoption of Spanish as a working language have spurred a new interest of Latin American countries in the Madrid Protocol, but there are still implementation issues which must be resolved so that Spanish or Portuguese-speaking users can enjoy its benefits.
Although Brazil has yet to correct some issues, such as those mentioned above, it is undeniable that this country, given its importance in the region, can push its neighbors, especially the countries that make up Mercosur, that is, Argentina, Uruguay and Paraguay, to join in.
Integration is the key to development in global times, and the consolidation of industrial property, hand in hand with the Madrid Protocol on trademark protection, is an important factor in this process.
For further information please contact: rflanzbaum@ojambf.com.
