The Madri protocol and its importance to Brazil: the list created by BRPTO with translations of Brazilian goods and services.

the Madri protocol and its importance to Brazil

 

The Madrid protocol came into force in 2019 and brought about major innovations in trademark registration in Brazil. This protocol aims to make it easier for applicants to file and manage trademark applications in several countries, through centralized management of these registrations.

The adoption of the Madrid Protocol brings the possibility of a multiclass system – not yet available in the BRPTO system. In addition, it also brings the international order system originated in Brazil, the order holder must pay a fee to the BRPTO for the certification order.

The certification is a formal examination carried out by the INPI, at this stage the BRPTO analyzes the information of the depositor together with the information on the registration application. This information will form the basis of the international application.

Afterwards, the request will be forwarded to the International Bureau (International Bureau of the World Industrial Property Organization – WIPO). The last step is to forward the documentation to each designated country. Countries will examine applications and apply their own legislation.

The great challenge of the Madrid Protocol is the translation of Brazilian elements such as drinks, typical foods such as feijoada into English or Spanish as provided for in the Madrid Protocol. The BRPTO trademark board created a large list with several services and products typically from Brazil and translated it for inclusion in a list called Madrid Goods and Services. The list, very well prepared by the BRPTO, contains more than 600 “Brazilianized” terms.

the Madri protocol and its importance to Brazil

The creation of this list by the BRPTO was aimed at preventing the following from occurring: other countries grant trademarks for denomination that are actually names of typically Brazilian products, hypothetically we can think about for example the United States permitting the registration of the term “feijoada” as a trademark or even “açaí ” which are typical Brazilian foods.

The list facilitates the work of Brazilian depositors interested in protecting their trademark abroad, especially when drafting the specifications and also serves for foreigners to understand the Brazilian terms since the trademarks are published for any third-party objections.

Some of the terms included in the list are: feijoada (bean and meat based dish), a carne de sol (sun-dried salted meat),  pão de queijo (brazilian cheese bun), brigadeiro (sweet made of condensed milk and chocolat), caipirinha (sugarcane-based alcoholic beverage), rapadura (brown sugar in the form of a small brick).

An example of a problem that happened was the registration of the term “açaí”, which is a fruit typically from the Brazilian Amazon rainforest, by a Japanese company. After negotiations, the Japanese patent and trademark office canceled the registration of the “açaí” trademark.

In general, Brazil grows in the area of ​​Intellectual Property with the adoption of this Protocol since it places Brazil in the international system for the protection and registration of trademarks.

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Lawyer Author of the Comment:Laís Iamauchi de Araujo

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Headline: The Madri protocol and its importance to Brazil: the list created by BRPTO with translations of Brazilian goods and services

“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”
“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”

Case study: the importance of registering your trademark abroad

importance of registering your trademark abroad

Although international agreements and treaties such as the Paris Convention for the Protection of Industrial Property (1883) sets the principles and rules for intellectual property regulation on State members, each country has its sovereignty to legislate on intellectual property among its borders. Therefore, to protect its intellectual property on a specific country an applicant must file a request in this country. 

Some countries, such as Brazil, adopt an “attributive” system for trademark protection, which means that a trademark is only protected when registered (with feel exceptions), following a “first to file” rule, that is the register is granted for the applicant who have first filed the request.

In that sense, trademarks which intent to be used worldwide or even used to commercialize goods and services with other countries should file a request in other countries to assure intellectual property protection, or even to ensure that a third party file a conflicting trademark.

importance of registering your trademark abroad

A case study of the conflicts that may arouse from the lack of register on other countries has recently started on Brazil. When the internationally famous reality show MASTERCHEF came to Brazil in 2014 its trademark was rejected because an Argentinian company had already filed a request for MASTER CHEF trademark for cuisine presential and online courses.

The Argentinian company recently had filed an infringement lawsuit against the producers and the television responsible for MASTERCHEF reality show. PEDUTI ADVOGADOS is currently working on this case to defend the television channel. No final decision has been issued so far, however this case already highlights the importance of registering trademark on other countries to avoid situations like that.

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Lawyer Author of the Comment: Pedro Eurico de Souza Cruz Teixeira

“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”
“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”