Surely the Madrid Protocol has facilitated the trademark applications in the more than 120 signatory countries. The Protocol guarantees greater autonomy to the applicant and also represents financial savings, both in official fees and in legal fees.

Anyhow, it is extremely important to remember that after the entry of the national phase of each registration, the WIPO International Bureau is not responsible for notifying the applicant of all the movements in the designation procedure, which is why it is relevant that the applicant has a local representative to monitor this process.

With regards to requests made in Brazil, for example, it is important to consider that third parties can file an opposition against the request and the applicant would have to present their respective manifestation. In addition, the process, even after it has been granted, may be subject to a nullity proceeding or even a request for forfeiture. All such decisions are published only by the Brazilian Patent and Trademark Office (BPTO), without the WIPO International Bureau notifying the applicant. Thus, the applicant may have its request rejected or annulled without prior knowledge of the opportunity to present its defense before the BPTO.

Moreover, another relevant aspect is that a local office is able to monitor the registration applications that other third parties make before the BPTO, whether they are through the Madrid Protocol or through the national applications. These requests are also not reported by the WIPO International Bureau. Without a surveillance system in Brazil, third parties can have granted similar trademarks, and the international applicant will not be aware of this.

In view of all the above, is recommend that the international applicant always have a local representative appointed in its application, so they can be aware of all local procedure and potential conflicts with third parties.

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Author: Ana Luiza Pires e Cesar Peduti Filho, Peduti Advogados

Source: MANCHETE

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“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.”