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 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
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.”