By Cesar Augusto Taborda Lima
For a Brazilian company beginning to export, the Madrid Protocol is usually the most rational way to protect a trademark in several markets at once. A single application, filed through INPI (Brazil’s National Institute of Industrial Property) and registered by the World Intellectual Property Organization (WIPO), allows a Brazilian maker of leather goods to seek protection in the United States, the European Union, Mexico or Chile. The result, however, is an international registration that bundles separate national protections, each decided by the local office under its own law, and that depends for five years on the Brazilian mark behind it.
The protection resulting from the international registration shall extend to any Contracting Party only at the request of the person who files the international application or who is the holder of the international registration. However, no such request can be made with respect to the Contracting Party whose Office is the Office of origin.
Madrid Protocol, Article 3bis, official WIPO text.
Filing starts at INPI
The Protocol has been in force for Brazil since 2 October 2019 (Decree 10,033/2019, which promulgated it in Brazil). It is open to Brazilian nationals and to anyone domiciled or holding a real and effective industrial or commercial establishment in Brazil (Article 2(1)), provided the same mark has already been filed or registered at INPI: the basic application or registration.
The basis sets the outer limit abroad: the international list of goods may match it or be narrower, never broader. Handbags and wallets fall in class 18 of the Nice Classification, while leather belts for clothing fall in class 25. The Brazilian basis must therefore cover both classes, and INPI accepts an international application resting on several national filings of the same mark by the same holder.
Filing is electronic, as INPI’s guide (in Portuguese) explains: the applicant pays INPI’s fee under service code 3004 and completes the international form in WIPO’s Madrid e-Filing system, in English or Spanish, the languages Brazil notified to WIPO on accession. INPI certifies that the particulars match the basis (Article 3(1)) and forwards the application; if WIPO receives it within two months, the international registration bears the date on which INPI received the international application (Article 3(4)). Filed within six months of the Brazilian application, it may claim its priority (Paris Convention, Article 4C(1)).
From WIPO to each national office
WIPO checks formalities only, registers and publishes the mark and notifies the designated countries. Each office then examines it as if it had been filed directly (Article 5(1)) and may notify a provisional refusal within 12 months of that notification, or 18 months where the country has made the declaration under Article 5(2)(b), as the United States and Brazil have; refusals based on oppositions may come later (Article 5(2)(c)). Absent a timely refusal, protection there equals that of a local registration (Article 4(1)(a)).
Later management is centralized: new countries can be added by subsequent designation (Article 3ter(2)), renewal is made before WIPO every ten years (Article 7), and changes of ownership, name or address are recorded in the international registration itself (Articles 9 and 9bis).
Costs
INPI currently charges BRL 280 per class for certifying the application. WIPO’s fees are paid in Swiss francs: a basic fee of CHF 653 for a mark in black and white or CHF 903 for a mark in colour, plus, for each designated country, either a complementary fee of CHF 100 or the individual fee that country has set, often per class, as in the United States; a supplementary fee per class beyond the third applies in some cases. WIPO’s Fee Calculator gives a current estimate. Local professional fees, should a refusal need answering, come on top.
The risks of the centralized route
Dependence is the most delicate point. If, within five years of the international registration, the Brazilian basis is withdrawn, lapses, is renounced or is finally rejected, revoked, cancelled or invalidated, in whole or in part, protection falls to the same extent in every designated country (Article 6(3)), even where the proceeding began within that period and ends later. This is the so-called central attack: a competitor who wins an opposition against the basic application before INPI (Article 158 of Law No. 9,279/1996, Brazil’s Industrial Property Law) or obtains administrative invalidation of the registration, available within 180 days of the issue of the certificate (Article 169), brings down protection abroad in one stroke. Transformation remains: within three months of cancellation, the holder may file national applications in the designated countries with the date and priority of the international registration, meeting each country’s requirements and fees (Article 9quinquies).
A term INPI accepts may also be too vague for another office. In the United States, the application must list the particular goods and include a verified declaration of bona fide intention to use the mark in commerce (37 CFR 2.32(a)(6) and 2.33(e)). WIPO’s Madrid Goods & Services Manager shows whether the offices that take part in the tool accept a given term.
A provisional refusal is answered before the office that issued it, under local law (Article 5(3)), sometimes through a local professional. In the United States, an applicant domiciled abroad must be represented by a U.S.-licensed attorney (37 CFR 2.11(a)); Chile’s office, as reported by WIPO, requires holders not resident there to respond through a local representative and in Spanish.
Finally, the system reaches only its members. In Latin America, Mexico, Colombia, Chile and Cuba belong to the Protocol; Argentina, Uruguay, Paraguay, Peru and Bolivia do not, according to WIPO’s list of members. There, the route is a national filing, with the six-month priority of the Paris Convention, to which all of them are party.
When national filings are the better choice
Direct national filing tends to work better when only one or two markets matter, because the basic fee and INPI’s fee are added to the local fees; when the relevant markets, such as Argentina or Uruguay, are outside the system; when the Brazilian basis is still vulnerable, because the application faces an opposition or the registration has just been granted; and when the foreign market calls for a different mark or a different list of goods, since the international mark must correspond to the basic one. Both routes can be combined: Madrid for members, national filings elsewhere.
As I see it, the decision starts in Brazil. With a sound basic filing, whose specification covers the goods that will actually be exported, the Madrid Protocol is an efficient instrument for growing market by market; without one, the first five years of the international registration are exposed to risks that no saving in fees can offset.